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APPL1C.ATI. 0_N 
Of 
H A H R JL E T _D. J:iLIiERSO.N:, 

Decided Jan. 17. 1089 . 

Recorded Vol. 59. Page 144. 

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VANCE, ASSISTAIIT COMIilGSIOIIER: 

Applioant api:eals from the decision of the examiner of 
Trade-Marks in refusing to register a label, the title of which 
consists of the words, "Ervilline, Liquid Polish." The examiner is 
undoubtedly right in his holding, the words certainly being regis- 
trable as a trade-marl: and must first be registered as such before 
the words can be registered as a label. 

I do not deem it necessary to cite authorities, as the 
practice in the office, on this subject, is so well known. The 
proper course for applicant to pursue is for her to rqg ister her 
trade-mark. 

The decision of the examiner is affirmed. 



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APPLiCATiO.N 
of 
THE C.HE^TER O.I.L C.O.., 

Decided Jan. 21. A88^ /^^l 

Recorded Vol. 3^, Va^e 110, 

000 33 — >/^ 

MONTGOJyJERY, COMLIISSIOIIER: 

Applicant asks Tor the registration of the words "Our 
brand" as a trade-marlj. for "Refined Petroleum Oil." 

March 9th, registration was refused for the reason that 
in the opinion of the examiner the words were "comraon property and 
such as any person had a right to use on his goods." E^ight days 
thereafter applicant filed an argument urging the registration,a:'d 
on the SOth of the same month applicant was again informed that 
the trademark, could not "be registered. On the 5th of May still 
another argument waariled, and twenty days later another office 
letter advising applicant that the case was finally rejected. On 
the 13th of December following, applicant petitioned the Commiss- 
ioner to direct this registration and such petition is now under 
consideration. 

In Brown on Trade-LIarks, 2d. Edition, par. 143, the "es- 
sential characteristics" of trade-marks are declared to be, 1st, 



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The Chester Oil Co. , Sheet -2- 
invarlatoility; 2d, individuality; Srd, tmiversality; and 4th, 
"exclusiveness of the right to use." 

In the first brief of coiinsel 'furnished to the commiss- 
ioner it is urged that the exaininer wrongfully held the vrorcfe pro- 
posed for registration "as merely descriptive," If that were 

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true I should certainly be disposed to agree with the reason as- 
signed by the examiner oy his refusal to register, but I think it 



quite manifest that,v/hile the word "descriptive" was employed in 
the office letter of March 30th, it was not intended to assert that 
the proposed trade-mark "Our brand" described or pointed out the 
quality or character of the goods. 

The difficulty which I find with permitting the registra- 
tio n of these words is the fact that they seem to laclc the fourth 
essential characteristic above mentioned, viz: "exclusiveness of 
the right to use." > 

The argument employed in applicant's second brief, late- 
ly furnished, is noticed. It Is ingenious and exhaustive upon the 
subject. Undoubtedly, as argued by counsel, the words "Our brand 
Oil" could scarcely be affirmed to be open to use by everbody. 
But the words "Our Brand" is a different matter. If one man or 
one firm may register these words as a trade-mark and thereby se- 



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The Chester Oil Co., Sheet -5- 
cure to himself or themselves the exclusive right to use them, why 
not with equal propriety register the words Our Manuf aoture . or the 
words Our Kind? I feel sure that .every manufacturer would ha^e T^u/ 
/goods, if true, with the /words yJOwc Brand, Our Manufacture, Our 
Kind, or W^ Brand, L'^ Manufacture, "&c. 

In conclusion, I am unable to see why every man who man- 
ufactures and sells goods of that character or of any other simi- 
lar character has not the primary right to assert what is true, if 
it be true, that he is selling his brand, my brand, our brand, and 
to so mark the goods if he pleases, and when so marked the words 
would be siE5>ly indicative of a fact. 

Upon the ground therefore and for the reason that regis- 
tration cannot and ought not to confer upon applicant the exclu- 
sive right to the use of the words sought to be registered, and 
examiner's decision is affiraied and the registration refused. 



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(Q APPLICATION 

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(f AIGELNUNEY, 

Decided Peby. 7, 1039 . 

Recorded Vol» 59. Page 250 . 

oOo 

VANCE, ASSISTANT COinil SSI CHER: 

Applicant applied for tlie registration of a label, con- 
sisting of "A Tropical Scene," the title being "Aqua de Florida" 
or "Water of Florida." The primary examiner refused to register 
the label, on the ground that it is a trade-marS:, from which de- 
cision applicant appeals to the Cominissioner and strongly insists 
on his right to elect which he will register first, his trade-marlc 
or his label, and cites Wilcox & GibLs Sewing Machine Co. v. Llar- 
ble, heard and decided in the Supreme Court of the District of Co- 
lumbia, C. D. 1882, p. 445, as authority for his statement. 

Applicant in citing this case does not in the same con- 
nection refer to the case of ex parte I-Ioodie, 28 O.G., p. 1271, in 
which the decision of the Supreme Court of the District of Colum- 
bia, in the case above quoted, was cited and comnented on by Com- 
missioner Butterworth, who held that a label which is a trade-mark 
must first be registered as a trade-mark then it can be registered 



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A. Nuney, Sheet -2- 

as a label. The case was also taken to the Supreme Court of the 

District of Coluni'bia. (See 30 C.G.,p. 97.) The court sustained 

the decision of Cpiraniss loner Butterrforth, thereby reversing their 

decision in the case of V/ilcox & Gibbs Sewing llachine Company v. 

Marble . 

Section 3, chap. 301, Revised Statutes, has the following 

clause: "Except that there shall be paid for recording the title 

»of any print or label not a trade-marK six dollars." This clearly 

vests the power in the Comiriissioner of Patents to decide what is 

a trade-marlv and what a label, as the section also says: "And 

"the Commissioner of Patents is hereby charged with the supervis- 

"ion and control of the entry or registry of such prints or labels". 

Applicant says, in effect, that inasmuch as he cannot y 

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register his trade-marl^ without showing that the same has been us-.- 
ed in commerce, that he should be allowed to first register his / 
label. He has, however, fully discharged his duty and protected 
himself by filing his label. WJien he has established a trade with 
foreign nations or with Indian tribes and has registered his trade 
mark, then his label is ready for registration. Applicant also 
urges that the publication of his label, in his trade-marlc will go 
to prevent the registration of his label, and he cites Marsh v. 



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A. Nuney, Sheet -S- 
Warren, 14 O.G., p. 678, to show that labels cannot be registered 
after publication; but in the same case Judge Blatchford held that 
the label must be filed before publication. He says: "At all 
events, the bill does not allege that the title and label were de- 
"posited before the publication of the label. Such averment is 
"necessary." 

In this case the label is already filed and previous to 
publication. The question of a combined trade-marK and label is 
discussed at length by applicant in his brief, and he seeks to 
show a difference between such a combination and a purely arbitra- 
ry trade-mark. I cannot see how it can be so construed as to show ' 

I 

that because a trade-mark may also be used as a label that it is | 

not a trade-mark in the full sense of the law. 

In the C. A. Yale Manufacturing Co. Limited, v. C. A. 

Yale, 30 O.G.,p. 1184, Commissioner Dyrenforth held: 

"A print or label registration, whereof a certificate is 
given by the Comnissioner of Patents, is in the nature of a 
grant to the owner or owners of any new print or label of the 
exclusive right to the saiiie. But no such print or label can 
be registered unless it properly belongs to an article of 
commerce, and is as above defined; nor can the same be regis- 
tered as a print or label when it amounts to a lawful trade- 
mark, or when its use in connection with the article to v;hich 
it is applied is arbitrary or fanciful." (See ex parte Auprus-- 
tus le Plonegeon, Ms. Decisions, Vol. 38, p. 428. 

The decision of the primary examiner is affirmed and the; 
petition is dismissed. 






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I of 

ARMOUR PACKING ^^., 
Decided. May 16. 1889. 

Recorded Vol. 40. Page 192 . 

oOo ►' 

PISHER, ASSISTANT COMII SSI ONER: 

This is ail appeal frora the decision of the primary exam- 
iner refusing the registration of applicant's trade-mark. 

The mark consists of a iDlock of compressed meat as it 
comes from the can resting upon a plate. An oval plate is shomi, 
but applicants do not confine themselves to this shape, the essen- 
tial feature of their trade-mark "being a block of beef tspon a 
plate. 

The examiner's objection is founded upon the trade-mark 
registered by the Wilson Packing Co., September 14, 1875, #2,935. 
This mark consists of a group of objects comprising a block of 
meat having several slices cut from it resting upon a plate togeth- 
er with a knife and fork, an empty can, and a flliedpan, all plac- 
ed upon a table. 

The question which arises in this case is whether appli- 
cant's proposed trade-mark so nearly resembles that of the Wilson 



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Armour Packing Co., Sheet -2- 
Packing Co. as to deceive intending purchasers. I do not think 
there is such resemblance. The marlcs are clearly distinguishable 
one from the other by the ordinary .ipurchaser, which seems to be 
all that the law requires; nor is this affected by the fact that 
applicants regard the block of beef without its accessories as the 
distinctive feature of their trade-mark. 

The decision of the examiner is reversed. 



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APPLiC.ATI.O.N 
Of 
JAME^ R. KLYG.!, 



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Decided May 27. 1889. 

Recorded Vol. 40. Pap:e 221 . 

rl /, oOo 

FISHER, ASSISTANT C01E.IISSI0TIER: 

This is an appeal from the decision of the examiner of 
trade-marks refusing the registration of a proposed trade-mart up- 
on reference to the trade-mark of the Evans Chemical Co., #14,305, 
April 19, 1887. 

The trade-mark sought to be registered by applicant con- 
sists of the letter G having the word "anti» printed upon its side. 
The reference shows the letter G having the word "big" printed up- 
on it in the same place as the word "antl" upon applicant's letter 
G. The ground taken by the examiner in the rejection is that ap- 
plicant's mark so nearly resembles that of the Evans Chemical Co, 
as to be likely to deceive an intending purchaser, the goods to 
which the two marks are to be applied being the same. 

I fully agree with the position taken by the examiner in 
this case, and, hence, affirm his decision. 



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( 

Id a Z Z l 1 c. a t i 0. n 

of 

Decided July 23. 1089 , 

Recorded Vol. 40. Page 425. 

oOo 

FISHER, ASSISTANT COIjMI SSI ONER: 

This is a petition from the action of the examiner of 
trade-marks refusing to register a label presented by petitioners. 

The label consists of the words "Cataract Mills; Bee 
Hive Brand; Pure and Genuine Pearl Hominy" with the picture of a 
bee-hive, and the refusal is upon the ground that it includes mat- 
ter registrable only as a trade-marlt, > 

The action of the examiner is based upon a long line of 
decisions of the Commissioners holding that in cases lilce this, 
registration cannot be had. These decisions proceed upon the idea 
that the statute makes labels and trade-inarks distinct; that a 
different fee is fixed for the registration of each; and that the 
object of the two is different, the trade-inarjc serving to indicate 
upon the goods to ?/hich it is applied origin and ownership, while 
the label is used to indicate the contents of the package upon 
which it is placed, and may include also the name of the person by 



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Snoole 8c. Halbe, Sheet -2- 
whom, and the place where the article is manufactured and other 
like matter, 

I have carefull/ examined the authorities cited "by the 
examiner and am satisfied not only that the examiner is right in 
his views as to the former rulings of the office, "cut also that 
such rulings are founded upon soimd principles. The only decis- 
ions which need "be referred to are: 

Simpson & Sons, C. D., 1876, 148. 

Moodie, CD., 1884, 45. 

Moodie v. Butterworth, C. D., 1885, 1. 

Wiesel, C. D., 1886, 23. 

It is urged "by the petitioners that the matter objected 
to "by the examiner cannot be registered as a trade-marls., because 
the law requires that a trade-mark shall be used in foreign com- 
merce or in comi'erce \7ith the Indian tribes, and they have not so 
used it, I do not think, hpvv'ever, that this fact need be consid- 
ered in determining the question of registration. It is apparent 
that any time any such commerce could be undertaken^ and the trade- 
mark would then be regist^reri under the law. 

I see no error in the decision of the examiner and his 
action is therefore sustained. 



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APPLiC.ATI.^11 
of 
BRADLEY&C.^MPANY, 

Decided Aug. 39, 1889 . 

Record e d Vol> 41. Pai^e 50. 

oOo 

FISIIER, ACTING COLLIISSIOIIER: 

Tills petition brings up for review the action of the 
primary examiner refusing registration to the word "Handy" as ap- 
plied to wagkons, "bugnies, sleighs, and all similar vehicles. 

The rejection of the examiner Is based upon the ground 
that the word "Handy" is descriptive, it being simply one of the 
ordinary qualifying adjectives of the English language, meaning 
simply "convenient," It is a well established principle of the 
law of trade-marts that words which are ordinarily descriptive can 
not serve as such mart. As instances of such words declared to be 
unregistrable are, "Evaporated" as applied to articles of food, 
Alden, ex parte, C. D. 1878, 142; Crystalline" as applied to arti- 
ficial precious stones, Kipling, ex parte, C. D. 1883, 54; 
"Straight Cut" as applied to cigarettes, Ginter v. Kinney Tobacco 
Company, 12 Fed, Rep,, 782; and "Cresylic" as applied to an oint- 
ment composed of cresylic acid and soap. Carbolic Soap Compariy v. 



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Bradley & Co., Sheet -2- 
Thompson, 25 Fed. Rep., 625. It has, however, been decided that 
if the descriptive character of a "word is so remote as to he only 
secondary so that the public will understand it as a fanciful term 
and not a descriptive word, it nay be registrable. Heyman, ex ■ 
parte, C. D. 1880, 194. 

The question then to be decided in this case is whether 
the word "Handy" as applied to vehicles is primarily or only sec- 
ondarily descriptive. To come to a direct conclusion as to this 
question, I have consulted all the English Dictionaries, some sev- 
en in number, which are contained in the library. Prom them I 
find that handy when used in the sense of convenient means nothing 
but near, close, or ready to the hand, or else suited to the use 
of the hand. The instances of the use of this word which are giv- 
en show this: 

"Ahi though he lives so handy, 
He never now drops in to sup." 

•» 'Wade his help hende ben'- had not help been near him'i 

"Ikly books are very handy." 

"The strilie-blocJc is a plane shorter than the jointer, 
and is more handy than the long jointer." 

"My books or tools are handy." 



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Bradley & Co., Sheet -5- 

If it could "be established that "handy" means convenient 
in the sense of "being well arranged or well adapted to the general 
purposes for which it is to be used, as when it is said "a house 
is convene i ent, " the case might be different, but in the best us- 
age, or so far as I am advised, in comiaon speech, handy has no such 
meaning as applied to vehicles, 

I thinli therefore that the examiner was in error in re- 
fusing registration, and, hence, reverse his decision. 



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of 

E.BENGE & ^O.MPANY, 

Decided Sept, 4. 1889 . 

Recorded Vol. 41. Pap^e 59, 

oOo 

PISHER, ASSISTAIIT COI/MI SSI ONER: 

This is a petition from the refusal of the examiner of 
trade-marks to register a trade-mark. 

The trade-mark as illustrated consists of a shield of 
dark color placed upon a square back-ground of a lighter color and 
bearing the words, "Benge's Home J/Iaae." The trade-mark is describ- 
ed by applicant as consisting of the figure of a square inclosing 
the figure of a shield, the shading of the shield being darker 
than that of the square. He does not, however, confine himself to 
this exact mark, but endeavors to broaden it by the statement that 
In place of the shield any other shaped figure may be used, it be- 
ing only necessary that one shall be enclosed within the other and 
the shading of the inner figure be darker than the outer. It is 
evidentthat tliis statement of applicant is broad enough not only 
to cover the mark which he shows, but any ?iark which would have 



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E. Benge & Co., Sheet -2- 
the general cliaracteristie of one figure Trithin another, the inner 
being of a darker color than the outer. If the registration is 
alowed in the form in which applicant has asked for it, it is 1 
clear that there can "be definiteness or certainty about his trade- 
mark - two essential features of such iiiark. 

It has often been said that a trade-mark is a commercial , 
signature, and being so, it should be as invariable as men's signa-s* 
tures usually are, so that any one seeing the mark upon the goods 
to which it is applied may instantly recognize their origin and 
ownership. That th6 present mark does not have this characteris- 
tic in the broad terms in which it is described is beyond dispute, 
and the examiner correctly refused registration. It is, however, 

suggested to applicant that while he should describe the essential 

as 
features of his trade-mark being just what he shows, he may intro- 
duce some statement in the description which will indicate that 
other figures somewhat different frosSi his, but yet presenting sub- 
stantially the same appearance to the eye, are to be considered as 
covered by the registration. 

The decision of the examiner is affirmed. 




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APPL1C.AT1^N 
^ COLUJJ^IBIA SEWING IvIACimiE COIvfPAHY. 

Decided Hov. 4, 1889. 

Recorded Vol. 41. PaF,e 228. 

oOo 

MITCHELL, COmil SSI ONER: 

This is a petition froin the action of the examiner of 
trade-marK.s refusing to register a label presented by the petioner 
for that purpose. The label consists of the words "Colttmbia Sew- 
ing Machines, " and the refusal to register is based upon the es- 
tablished practice of the office, imder which labels bearing trade 
marks are not registered until the trade-marK has first been reg- 
istered. That the words "Columbia Sewing Machines" contain mat- 
ter which could be registered as a trade-marX, there is no doubt. 
In fact, applicant practically admits that such is the case. It 
is true that the word "Columbia" has been included in the name of 
the manufacturer in this instance, but the trade will undoubtedly 
understated - at least, a large portion of the trade - that the 
words sought to be registered apply arbitrarily to the sewing ma- 
chines in connection with which they are used to indicate origin 
or ownership. In fact the Demorest Fashion and Sewing Machine Co. 



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Columbia S. M. Co.,Slieet -2- 
had iiad the word "Columbia" thus registered as a trade-mark for 
sevxing machines before applicant's application ^as completely fil- 
ed. It is true that applicant filed this application on January- 
Si, 1809, but the fee was not paid until June 19, 1889, so that 
the latter date must be regarded as the date of the completion of 
the application. 

The principles involved in this case are the same as 
those in the case of ex parte Snook & Halbe, 40 MS. Dec, 423, de- 
cided July 23, 1889, and in the authorities assembled and cited in 
that case. 

The question as to the title to the trade-marS. canr.ot now 
be inquired into. This could only be done upon the filing of a 
trade-mark application and upon subsequent interference proceedings 
instituted for the purpose of determining priority. On this sub- f 
ject the examiner says: 

"The applicant's allegation that he is the owner of this 
trade-mark is one to which under the present circumstances 
the office can pay no attention. If he desires to contest 
the title of the other party there is a regular and establish 
ed procedure for that purpose, by filing a trade-mark appli- 
cation and by interference." 

Por these reasons the petition must be dismissed. 



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^ APPLICATION 

'^ —JOHJiiiiidiiYAR D,_ 

Decided Nov. 5. 1889 . 

Recorded Vol. 41. Pa^e 240 . 

oOo 

PISHER, ASSISTANT COinvilSSIOHER: 

This petition brings up for review the decision of the 
examiner of trade-warlis refusing registration to the v;ord "Royal" 
as a trade-marK for chocolate preparations upon the ground that it 
is not sufficiently distinctive from the words "Royal Dutch" which 
have already been registered as applied to the same class of goods. 

The only question to be decided is whether the word 
"Royal" so nearly resembles the words "Royal Dutch" as to be cal- 
culated to deceive the ordinary purchaser. As to this question, I 
am of the opinion the examiner correctly ruled that they do, es- 
pecially as the word "Royal" is really the distinctive part of the 
trade-mar'K, the word "Dutch" being merely descriptive. 



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K '^ APPLlCATI^l. 

^K> Of 

ELAN2HAN; T. ZllLD, 



U Decided Hov» 14. 1889 . 

Recorded Vol. 41. Page 275 . 

oOo 

FISHER, ASSISTAIIT COI^Hn SSI ONER: 

This is a petition from tiie action of the examiner of 
trade-marts refusing to register a label presented by petitioner 
upon the ground that it embraces matter proper for trade-marX reg- 
istration. 

Pour assignments of error are made by the petitioner. 
The first is that the examiner is without any discretion to deprive 
a party presenting a label to the Patent Office for registry with 
the fee required by law of such entry or registry. As to this it 
is only necessary to say that the practice of. the office in this 
respect is well established and has recently been affirmed by the 
present Commissioner in the cases of Snoot and Halbe, ex parte, 40 
MS. D., 423, and The Columbia Sewing Machine Co., ex parte, 41 LIS. 
D., 228. 

The second assignment of error is that the examiner err- 
ed in deciding that a label which is the wort of an author and 



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E, T. Field, Sheet -2- 
whicii in its entirety is not a trade-mark is not capable of entry. 
In support of this assignment it is urged that th€^ Congress in 
transferring the registration of laloels to the Patent Office meant 
that they should still be subject in all reppects to the law of 
copy-right, and if they were presented for registry accompanied by 
a proper fee and all necessary formalities complied with they must 
be registered as a matter of course. As to this it is necessary 
only to say that in so sending the registration of labels to the 
Patent Office the Congress imposed a restriction "excejjt that there 
shall be paid for recording the title of any print or label, not a 
trade-mark, six dollars," which has always been construed by the 
office to mean that the label should not in itself be a trade-mark 
or should not embrace matter which in eS'fect amounts to a trade- 
mark and which if placed upon ivierchandise would perform the func- 
tions of a trade-mark in indicating origin and ownership. There 
is nothing in the argument of counsel to convince me that the hold 
ing of the office is not well founded. Wliether the label embrac- 
ing the trade-mark is the work of an author or not it cannot be 
registered unless the trade-mark shall first be registered. 

The third assignment of error is that the examiner erred 
in deciding that a label containing; a trade-mark may not be enter- 



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E. T. Field., Sheet -5- 
ed upon the payment of a fee of twenty-five dollars. This assign;:^ 
ment is based upon the action of the petitioner in sending to the 
office after the filing of his application for a label registra- 
tion, which was accompanied with six dollars, nineteen dollars 
more to maKe up the fee required for the registration of a trade- 
mark. The answer to this is that, if the matter is not proper in / 
itself for trade-mark registration it cannot he made so hy the 
pajEment of a trade-mark fee. Under any circumstances a mark can / 
be registered only upon the ground that it is a lavTful trade-mark: 



which has been used in commerce with foreign nations or Indian 



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tribes. Such use has ndt been alleged here* 

The fourth assignment of error is that the examiner err- 
ed in refusing a copy of the record in accordance with the copy- 
right act, which is answered by the considerations atoove stated as 
to the first and second assignments of error. 

The decision of the examiner of trade-marks is affirmed. 



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APPL1C.ATX0N 
of 

HURLBURT IMNU7ACTURI1IG COIJUPMY, 

Deoided Nov. 50. 1889 . 

Recorded Vol. 41, Page 551 » 

oOo 

MITCHELL, COMMISSIONER: 

In this oase applioant seelts to register a trade-marS^ 
for wagon-braKe locks consistir^ of the representation of a wagon- 
brake locX attached to a panel of a weigon body, and having a whip- 
socket attached to said locX, vrith a whip standing upright in said 
sociket, and the lash of the whip loosely wound around the whip- 
handle, and extending down to one side of the socket, the essen- 
tial features of the trade-mark being "the representation of a 
wagon-brake lock attached to the panel of a wagon-body with whip- 
socket and whip." 

The examiner refuses registration upon the ground that 
the wagon-brake lock, which constitutes a portion of the mark, is 
a representation of a device for which a patent has been granted 
to the petitioner. 

Applicant replies that since 1879, it has been in undis- 
puted possession of the trade-mark which it seeks to register; 



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Hurlburt Mfg. Co., Sheet -2- 
that its goods are known hy this marX, which are used upon all 
kinds of brake-locks made and sold by It; that the examiner is in 
error in stating that the device claimed is merely the representa- 
tion of the patented article, inasmuch as it possesses arbitrary 
matter, to wit: the detached wagon body panel and whip; and that 
although it is well settled that the name of the patented article 
cannot be monopolized by the patentee after his patent has expired 
it is equally well settled that the marks, designs, symbols, di- 
rections, and other indicia placed upon the packages containing 
the article on which the patent has expired may be lawful trade- 
marks, and their use by others restrained by the courts. 

Without deciding what would be the effect of attem^ling 
to register a cut of a patented article as a trade-mark for use 
upon such article, I agree with the applicant that the arbitrary 
matter contained in the trade-mark now under consideration is suf- 
ficient to entitle it to registration. Neither the panel of the 
wagon nor the whip, nor so far as it appears the whip-socket, con- 
stitutes a part of the patented brake, and it is obvious that if 
it shall ever be held by the courts that the right to use the rep- 
resentation of the patented article strictly as a trade-mark be- 



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k 



f 



Hurlburt Mfg. Co., Sheet -5- 
comes public at the expiration of the patent for it, it would not 
follow that the public could appropriate the entire mar^, and thus 
give to articles not made by the petitioner the appearance of hav- 
ing been manufactured by the petitioner himself. 
.The petition is granted. 



46 



1 




47 




48 




ALL k L Q.A Z L2R 
of 

Decided Jan. 5. 1890 . . 

Recorded Vol. 41. Page 495 . 

qOo 



FISHER, ASSISTANT COIfill SSI ONER: 

This petition is taken from the action of the examiner 
of trade-marl:s refusing to register a trade-mark presented by ap- 
plicants consisting of the words "Chew the Game CocX." The refus- 
al of the examiner is "based upon the ground that the proposed 
trade-mark is so nearly like the mark registered "oy Cameron & Co., 
#11,058, as to be calculated to decieve the public and to injure 
the registrants of such marl. 

As originally presented the -word "Game Cock" were claim- 
ed by the petitioner to be the essential features of their mark. 
Upon being referred to the registration of Cqmeron & Co. they add- 
ed the words "chew the", but it is obvious that the words "game 
cock" alone being the essential features of the trade-mark the ad^^ 
dition of the words "chev; the" is of no consequence. 

The mark registered by Cameron & Co. has for its fea- 
tures the word "game" accompanied by the picture of a cock and 



4S 



Bendall, Hines &. Co»,Gheet -2- 
oertain other accessories which are not essential. Obvioiisly the 
effect and intent of the users of Cemeron & Company's mar^ is to 
indicate that gaine oocl-c tobacco is manufactured by them. It is 
equally obvious that the intent and the effect of the use of the 
maris, presented by petitioners is that their tobacco shall be known 
as game coca tobacco. Under the circumstances it is unquestiona- 
bly true that confusion would result to the public, and that the 
parties who had first adopted the mark would be injured by the use 
of that presented by petitioners. 

The case is strictly analogous to that of the American 
Lubricating Co,, ox parte, C. D.,1876, 5G, in which the word "star" 
and the figure of a star were held to constitute substantially the 
same mark. In zhat case Mr. Commissioner Dueell said: 

"XXX the oil made by the Galena Oil-Works is doubt- 
less now known and called by the public the 'star brand* or 
the 'star oil', and the adoption of the word 'star' instead of 
the figure by another company manufacturing the same article 
may be for the express purpose of taking advantage of this 
popular designation, and whether that is the intention or not, 
such it appears to me would be the result, x x x and the 
adoption of the proposed mark would, in my opinion, procure 
for the applicant the precise 'benefit of that deception 
which general resemblance is calculated to produce' ". 

Using the words "Gaiae Cock" in place of the word "star" 

the parallel betv/een the tvro cases is clear. 

The decision of the examiner of trade-marks is affirmed. 



48 



1 



5U 



^"v^P** 



^*n 



,7 



1 



AZZIiiC.ATIO.N 
of 
J^HN^O.N, GLOVER & ^^., 

Decided March 25.1890 . 

Recorded Vol. 43. Pap:e 572 » 

oOo 

FISHER, ASSISTANT COIJIJI SSI ONER: 

This petition is taken from the refusal of the examiner 
of trade-raarlvs to register the word "Bromo-Phosphates" as a trade- 
mark. The examiner's action is "based upon the idea that the word 
^Bromo-Phosphates" although coined by the petitioners is a generic 
Iterm descriptive of a variety of compounds manufactured and sold 
by different persons. As instances he gives "Bromo-Pyrine" and 
"Bromo- Caffeine. " 

It is denied by the petitioners that the word "Bromo- 
Phosphates" is a word which in any senselincludes any known com- 
pound; but that on the contrary, if by Bromo-Phosphates is meant 
a compound of any of the bromides and phosphorus, the word covers 
an impossible compound, and is therefore purely arbitrary. This 
position is supported by the affidavits of two expert chemists, 
which are sufficient to satisfy me that the examin^ir's position is 



50 






¥ 



Johnson, Glover & Co. ^ Sheet -2- 
wrong. It is, however, proper to say that the affidavits were 
not submitted to the examiner, but were filed with me after argu- 
ment. Had they been submitted to him, I have no doubt he would 
have admitted the mark for registration. 

The decision of the examiner is overruled. 




50 



I 



51 




'W^i^mmmm 



^P^PPPPP" 



^IF 






■ 



APPL1C.ATI.0.K 

Of 
JOHN B. C.A1I D Y . 

Deoided Aiog. 5.1889. 

Recorded Vol. 40. Pa^e 474 « 

oOo 

MITCHELL, COlEvilSSIOIIER: 

Applicant seelis to register a trade-mark the essential 
feature of which is the representation of a "Red Greelc Cross." 

In the application it is stated that applicant has used 
this trade-mark continuously since the 15th of Jantiary, 1885, and 
in comnerce with the Muskogee trite of Indians, and the class of 
merchandise to which it is appropriated is coiigh medicine, and the 
particular description of goods comprised in such class is cough- 
drops, cough-sirup, and coixgh- lozenges, and that it has "been the 
practice to print or stencil the trade-mark on "boxes, bottles, or 
packages containing the goods, or on labels, to be attached there- 
to, and it may be printed on cards, letter-heads, bill-heads, cir- 
culars, etc., and it may be applied to the goods in any suitable 
way. 

The examiner refused registration on the grouAd of the 
use of this symbol by the Red Cross Society upon its medicines. 



J. B. Candy, Sheet -2- 
hospital supplies, etc., and that to allow it would be an imposi- 
tion on the publie. 

Applicants petitions the Connuissioner prying that he 
review the action of the examiner to the end that petitioner's 
right be protected and the desired registration accorded. Appli- 
cant contends that the Red CroSs Society has never registered this 
symbol as a trade-maric, and relies upon ex parte King, 46, 0. G., 
119. 

It is true that the Red Cross Society may not have reg- 
istered its symbol as a trade-mar!k, nevertheless it is a celebrat- 
ed organization having to do with hospital supplies and medicines 
and calling itself by that name, and a trade-maric consisting of a 
red GreeX cross, either with or without the words "Red Cross", 
would be calculated to convey the impression that the article was 
manufactured or its use sanctioned or approved by that society, 

T'or the above reason and for the reasons given in a some- 
what similar case - ex part e Chicester Chemical Company, recently 
decided, the action of the examiner is sustained and registration 
is refused. 



•w-^^m^timKi 



5'> 



l^a^ 



I 



53 



"■F 



54 




APPLiC.AT.I.^11 
of 
BE^RG.! D. HiLT.O.K, 

Decided Dec- 27. 1889 . 

Recorded 7ol» 41. Pap:e 452. 

oOo 

MITCHELL, COIvCnSSIOIIER: 

The examiner is sustained so far as he holds that the 
proposed trade-marK is anticipated by a prior registration. Ap- 
plicant insists that the former mark had been abandoned, go that 
there is no reason, as he alleges, why his mark should not be reg- 
istered, 

I remand the case to the examiner for the consideration 
of the question of abandonment v7ithout intimating any opinion as 
to whether abandonment has been established in fact, or if so es- 
tablished that it would avail applicant in law, - the object of 
this reference being to enable the examiner to investigate without 
any dl cat ion a question not heretofore before him. 



l 



m 



)D 



^V 



P- 

T-ISHER, ASSISTANT COlCnSSIOirER: 



of 

THE EXCELSIOR SPRIITG COIigANY , 
Decided Avlf-:. 20. 1890 . 

Recorded Vol. 44, Papie 127 . 
pOo 



This is a petition from the action of the examiner of 
trade-marks refusing to register the v'ord "Perro-manganese" as a 
trade-mark applied to mineral water. The grounds of this refusal 
are that the terra is descriptive of the peculiar ingredients re- 
lied upon to give special value to the water, that it indicates 
the presence in the water of iron and manganese, and that by per- 
mitting this registration it would grant to these applicants the 
exclusive right to the use of a term which might as properly be ap- 
plied to the owners of othe^springs containing iron and manganese. 

It is ui-ged by the petitioners that the word "ferro-man- 
ganese* is purely arbitrary and not descriptive because there is 
no known compound called by that name. In support of their posi- 
tion they cite the decision of the Comirdssioner in the case of 
Johnson, Glover & Co., 42 MS. D., 372, in which the brono-phos- 
phates" was admitted to registration, it appearirig that there was 



t_t.'-.2- 



m 



The Excelsior Spring Co., Sheet -2- 

no such compound Itnovm to chemists and that the word was therefore 

ar"bitra3?y. 

that 

This case, however, differs from that in^the word "ferro- 

A 

manganese" is in comnon use to describe a compound of iron and man 
ganese, as appears from the reference to "Iron and Steel,* "by 
William Henry Greenwood, Cassell & Co., London, Paris, New YorX, 
and Melbourne, 1887, pages 58 and 75. It thus appearing that the 
word is not one of purely arbitrary selection, but that it is 
properly descriptive of the leading ingredients in the v;ater, it 
is clear that the position talcen by the examiner is correct. Any 
one seeing the v/ord would understand from it that the water to 
which it was applied contained iron and manganese or ferre-manga- 
nese, and an advertising circular filed by the petitioners show 
that this in fact true. 

The decision of the examiner of trade-marfes is affirmed. 




:. ■•4- 



I 



55 



•6 



a ■ 

J 



A 


P 


P 


L 


1 c. . 
of 


A, T 


ION 


T 


H 


0. 


M 


A 1 


R i 


I ^ s. 


Decide 


;d 


July 


10, 


1890. 



Reoordcd Vol. 45. PaF,e 429 . 
-oOo 



FISIIER, ACTIl'IG GCivE^ISSIOIIER: 

This petition is taken from the action of the examiner 
of trade-inarXs refusing to register the word "silR" as a trade- 
mark for soap ond soap po^vders . 

The action of the examiner is "oased upon the ground that 
the word silk as applied to soap is ill its nature descriptive as 
Indicating the special use for which the soap is intended, the ex- 
aminer being of the opinion that "silk soap" would "be commonly un- 
derstood by the intending purchaser as a soap for washing silk or 
articles of silk. 

If it were clear that this idea is the one most read- 
dily conveyed by the use of the ^ord sought to be registered, I 
should have no hesitation in affimi^ing the decision of the exam- 
iner, but I am not able to concur in this view; neither is it clear 
to me that the alternative is either descriptive or deception. It 
appears from the record that the word "silk" is an arbitrary se- 



56 



T. Ross, Sheet -2- 
lection, and that the petitioner does not intend it to be applied 
to a soap especially designed for washing sill\ goods. As used by 
him, the term is therefore purely fanciful, and the authorities 
are clear that where such is the case the trade-marlt may be regis- 
tered. There is ample precedent for registration, here in previous 
registrations allowed by the office. I have been furnished by the 
applicant with a list of trade-marks already registered oy the of- 
fice. for kindred terms. From this list I note tiie following words 
indicating fabrics: Flannel, Linen, Lace, Velvet, and Satinet. I 
also note as indicating articles: Handkerchief, Napkin, Towel, 
and Stocking. It is prestuned that in all these oases it must have 
appeared that the soap. was not intended to be used upon the par- 
ticular article whose name it bore, and that therefore the termas 
applied to soap was ptfcrely fanciful and that it was not likely to 
deceive. Such clearly is true here. The case is quite similar to 
that of Oornwall and Brothers, ex parte, 12 O.G.,ol2, in viiich the 
geographical name Dublin was admitted to registration, and the 
same course should be pursued here. 

In his letter of refusal the examiner referred to a re- 
jected application in which the office had refused to register the 
word "silk" as applied to soap, it appearing on the faoe of the 






3 



^K~ 



57 



mm^ 



58 



T. Ross, Sheet -3- 
application that the applicant intended to apply this term to a 
soap to be used "by si Hi dyers and silk washers; and in the last 
letter it is stated that as no evidence appears that the applica- 
tion is either abandoned or forfeited it ^ill be held to be an an- 
ticipation. I do not understand the examiner now to adhere to 
this ground of refusal, for in his answer to the petition it is 
said that that application has been cited in the case less as a 
formal reference than as containing statements which support the 
examiner's position. It will perhaps hardly be necessary there- 
fore to say that a rejected application is no more a reference for I ? 
a trade-mariL application than is a rejected mechanical application 
for a mechanical application. Besides the application referred to 
does not afford a support to the examiner's present position, be- 
cause it is clearly indicated in such application that the soap to 
which the word "sillc" is to bo applied is intended for use in con- 
nection with silk fabrics. 

The decision of the examiner is overruled. 



58 



59 



r 



G 



^^C/^-e/ 



APPLI.^ATI. K 
Of 
THE DIAMOND LABORATORY COlJlPAFlf . 



Decided July 25,1890. 

Recorded Vol. 44, Pap^e 18. 

oOo 

MITCIffiLL, comiissioiiER: 

I think it is going too far to refuse to register this 
label. The sprig of marshmallow is already registered as a trade- 
mark, showing that the applicant has endeavored to comply with the 
rule of the office requiring that trade-mark matter shall not ap- 
pear in a registered label until it has first been registered un- 
der the law relating to trade-marks. 

The examiner is understood to object to the symbolical 
representation of the name of the applicant, which consists of a 
diamond and accompanies the applicant's name in a printed form. 
If the registered sprig of marshmallow were not a part of the lab- 
el, I might rule otherwise, but the princip]^ symbolical figure 
having been duly registered, I think that the subsidiary figure 
referred to may be disregarded as not intended to perform tlie of- 
fice of a trade-mark, and that the label should be registered. 

The petition is granted. 



60 



61 



f.62 



■^"^ 






3 




APPLiCATI.^H 
Of 
THE IvIANITOU MIIIERAL WATER CO . . 

Decided Sept. 19.1890 . 

Reoorded Yol> 44, Pap;e 251. 

oOo 



HETCHESiL, COIMISSIONER: 

Applicant seelcs ta register the -crords "Ginger Champange" 
as a trade-marlc for effervescent or carbonated mineral water and 



ginger, 



It is stated in the application that - 



"One way in which said comTjany uses the trade-marK. is by 
arranging the words * Ginger Champagne' in plain block letters 
on a baclcground composed of fine parallel lines, which lines 
are preferably of a different eolar of the letters composing 
the words, the word 'Manitou' being arranged above the words 
forming the subject-matter of this trade-mark and the back- 
ground on which they are printed. 

"The other way in which said compar^y uses its trade-mark 
Is in connection with a pictorial representation of a spring 
which appears in the foreground of the cut; and in the back- 
ground of the cut is represented a mountain or hills, partly 
overgrown with trees, while the representation of one or more 
houses is shown in the middle of the picture. The border or 
surrounding edge of this cut or pictorial representation is 
curved and below the cut the words 'Ginger Champagne' of this 
trade-mark are arranged in a curved line and represented in 
block letters. Above the cut the word 'Manitou' is located 
and it is also arranged in a curved line." 

It is further stated in the application that the word 



.0.-i»' 



Manitou Mineral Water Co., Sheet -2- 
"Manitcu", the entire pictorial representation, and the background 
on which the trade-mai-k is arranged, may he omitted altogether or 
varied and changed at pleasure without materially altering the 
character of said trade-marS: and that the essential features there 
of are the words "Ginger Champagne". Applicant states that this 
trade-marlfe. has been used continuously in its business since Decem- 
ber 11, 1886; that it is used in commerce by it between the United 
States and foreign nations or Indian tribes, and particularly witli 
Mexico; that the class of merchandise to which it is appropriated 
is beverages, and the particular description of goods comprised in 
said class on which it is used is effervescent or carbonated min- 
eral water and gii>ger; that it is usually applied to bottles con- 
taining the mineral water by means of labels, which are pasted or 
otherwise affixed to the bottles; that it may be blown into the 
bottles containing said mineral water, and that it may be applied 
to the boxes or other pacl<:ages in which the bottles are packed and 
shipped by means of labels, or by branding, stamping, stencilling, 
or otherwise affixing it to said packages, boxes, caskets, etc. 

The primary examiner refused registration upon the ground 
that the phrase "Ginger Champagne" is merely the descriptive name 
of applicant's merchandise and therefore cannot be monopolized as 



1 



m 




63 



64 



illPP^'lPP'^li^il 






T 



"tv*" 



Manitou Mineral Water Co., Sheet -3- 
its trade-mark. The examiner further states in his letter of re- 
jection of September 3, 18S9, as follows: 

"The examiner's personal recollection of the use of this 
term for an effervescing drinS: goes "back more than thirty 
years. Receipts for its preparation under that name are pub- 
lished in various countries. See Spon's Household Manual in 
Patent Office Library, page 102." 

Pron this decision applicant now appeals. 

In the case of Stoughton v. WoodB-ard et al.,S9 Fed. Rep., 

902, it was held that the words "Cough Cherries" as applied to a 

confection were not descriptive of the qualities of the article, 

but were sufficiently arbitrary and fanciful to be appropriated as 

a trade-mark. The court said: 

"If the label adopted had been 'Cough Candy.' 'Cough 
Remedy,' or 'Coxigh Confection,' or if" the article sold had 
been cherries in fact, and labeled as these goods were, the 
case would come within the ordinary rule that, wlien the words 
adopted are simply descriptive of the qualities of the ar- 
ticle sold, they will not be sustained as a trade-mark, on 
the principle that what is already the common property of ev- 
erybody cannot be exclusively ap'^ropriated as the property of 
any individual." 

Applicant relies "upon Stoughton v. Woodward et al . . supra 

and also urges that the true principle is laid down in Canal Co., 

V. Clark, IS Wall., 311, (at 322,) thus: 

"Words in coranon use, with some exceptions, may be adopt- 
ed, if, at the time of their adoption, they were not employed 
to designate the same, or like articles of production." 



m^m 



Manitou Mineral Water Co., Sheet -4- 
Attesnpting to apply this principle laid down in the lat- 
er ease and illustrated "by the former, applicejit says, (see Brief) 

"We submit that the words "Ginger Champagne" must "be con- 
sidered as a whole, and the question is whether in their con- 
junctive use they express the nature or qualities of the ar- 
ticle to which they are applied. That article is mineral wa- 
ter with all its natural qualities unchanged but with an ad- 
mixture of a small qualtity of giner. Mineral water is the 
essential quality of the article. The characteristic word of 
the symbol is champagne, and it cannot be affinaed that that 
word in any sense describes mineral water whether by itself 
or mixed with some other substance. Kor can the prefix Gin- 
ger bring the word Champagne any nearer to expressing mineral 
water. Nor can the word Ginger convey any idea of the char- 
acter of mineral water, but its only effect is to exclude the 
idea that the coimnercial article fcaown as champagne has any 
part in the product.** 

It must be conceded that a beverage consisting of mineral 
water containing ginger is a yery unique article, and it can hard- 
ly be said that the mixture of water, ginger, raisins, oranges, and -^ 
lemons, before referred to, is either the same or a similar arti- ' 
cle, in any just sense. 

It appears that the applicant adopted the marlc as long 
ago as 1886; and that it has since been used continuously, I thinS. 
the applicant should be given the benefit of the doubt, anx. that, 
care being taken to indicate that the use of the trade-marl: is 
limited to a mineral water and ginger mixture, the petition may be 
granted. 



Jl 



61 



66 




Vi*^*'"'': 



APPLI.JCATI.O.K. 
of 
THE mAllOlW LABOFvATORY COMPASTl, 

Decided July 25,1800 . 

Reoorded Vol. 44, Va^e 19 . 

oOo 



MITCHELL, COMvIISSIOlIER: 

The potitioner seelis to register a la^bel for use upon a 

soap called "liashinallow SRin Soap." The label is thus desorlbed 

in the application. 

"The title of said label is "Llarshinallo?/ Slkin Soap, ' 
and said label consists of the words and figures as follows, 
to wit: At the top of the label is the v/ord 'Marshmallow' in 
large letters arranged upon a curved line. Imriediately be- ' 
neath is the representation of a part of a rnarshmallow plant 
having thereon leaves, flowers, and buds. Below the figure 
just referred to are the words ' Slsin Soap, Prepared by the 
Diamond Laboratory Co.' " 

It is clear that this label contains what is known as 

trade-mark matter; that is to say, words and symbols entitled to 

registration as a trade-mark or trade-marks, upon supplying the 

proofs required by law. It is equally certain that a rule of long 

standing in the office requires that labels containing trade-mark. 

matter should not be registered until the portion or portions 

thereof constituting trade-mark matter have been registered in 






Diaiaond Laboratory Co., Sheet -2- 
aceorda.nce with the provisioiis of the statute relating to trade- 
marlsLs . 

Applicant "bases its olaln to registration upon two 
grounds: (1) That the petitioner is entitled in accordance with 
the decision in the Wiloox & Gibbs Sewing I.lachine Co. .v. E. M. Mar- 
ble, CD., 1882, 445, to register a label if he so elects, whether 
or not it contains trade-mark matter, and (2) That the trade-mark 
matter has been already registered by the petitioner, under date 
of March 25, 1890. 

1. The doctrine of the opinion referred to by the peti- 
tioner has been overruled by the Supreme Court of the District of 
Columbia, (Moodie v. But terworth, CD., 1885,1, ) and the settled doc- 
trine of the office Is that labels containing or constituting trade' 

i 

maris cannot be registered as labels until the trade-marlc has al- j 

! 
ready been registered in accordance v-'ith the statute regulating 

the registration of trade-marks. f Ex parte Simpson & Sons, CD., 

1876, 148; ex parte Moodie. CD., 1884, 35; Moodie v. Butterv/orth, 

CD. ,1885,1; ex parte Y^iesel. C D.,1886, 22; ex parte Columbia 

Sewing Machine Company, 41 IIS. Dec. .228; ex parte Snook & Halbe, 

40 MS. Dec, 423. ) 

2. The declaration of trade-mark #17,704, registered 
March 25, 1890, by the petitioner, states that the Diamond Labora- 



i 



r^ 



66 



67 



wii^^-"i^i«»p^HIP 



Diamond Laboratory Co., Sheet -3- 
tory Company has adopted for its use "a trade-marlc for rnediolnal 
and toilet preparations," this statement being followed by the us- 
ual description setting forth the nature of the rcsirk, the class 
of merchandise to v/hich it has been appropriated, and the particu- 
lar description of goods in connection liirith which it is used. The 
passage referring to the class of merchandise and the particular 
description of goods is as follows: 

"The class of merchandise to which this trade-marlc is 
appropriated is medicinal and toilet preparations, and the 
particular description of goods comprised in said class on 
which said trade-mark is used by said company is emulsified 
preparations, throat and lung tablets, cough-mixtures, and 
lotions for the skin." 

The primary'- examiner held that the trade-marJk. is regis- 
tered only for the particular articles named in the passage qtioted 
as the articles upon which the trade-mark is used, and insists that 
a trade-mark must be registered for t3ie particular class of goods 
upon which the label is to be used before the label is entitled 
to registration. 

The principle which the examiner seeks to apply is un- 
doubtedly correct; but there is some doubt upon the question wheth- 
er this case is one which calls for the application of the princi- 
ple. Although the article mentioned in the label is not one of 



I 68 



Diamond LaTooratory Co.^Glieet -4- 
those articles a "particular description" of which is given, it 
would seem to be intended to constitute a "medicinal" or "toilet 
preparation", within the meaning of those words as contained in 
the preliminary portion of the declaration. 

While I do not hesitate to affirm the principle of decis— | 
ion which the examiner seeks to apply to the case, I am also of ' 
opinion that a slight amendment, mailing it clear that the label is 
for use upon a soap designated for either medicinal or toilet pur- 
poses, would entitle the applicant to registration, and the appli- 
cation is remanded to the primary examiner with instructions to act 
favorably upon it, if a suitable amendiuent is tended by the ap- 
plicant. ^ 

If there remain some possible doubt upon the whole case 
whether the trade-mark has been registered for a class of articles 
including "Marshmallow Skin Soap," I think the applicant should 
have the benefit of that doubt. 



!• 68 



^'^svBBvea^eBS? 



69 



m^mm^^mmfm'^ 



mgm^i 




Y Ly APPLICATION 

lli 1 S. R S E D, 
Deolded Sept. 34.1890 . 

Recorded Vol. 44. Papie 246 . 

oOo 

MITCHELL, COI.cn SSI OliER: 

The applioajit seeks to register the word "Tablet" as a 
trade-mark for snuff. The examiner decides adversely upon the 
application, and petition is taXen to the Coinmissioner. 

It appears that the applicant has an application on file 
^or a patent for snuff compressed into the form of flat disks, such 
as are coimuon at the present time for man^ substances and are 
known as "tablets." The examiner's decision holding that the word 
"Tablet," under the circuinstances, would be descriptive and v;-ould 
operate to prevent the sale of snuff in tablet form by those who 
could, as truthfully as the applicant, say that their compressed 
snuff was in tablets, is affirmed and the petition is denied. 



70 



wm^mfmm^'mm'wr^mwr^^mf''^'rf^^^m 



3 ^^-^-^tm^^ 

APPLiC.ATI.^|[ 
[J METRgPOLIgAK WATCH COlvIPANY . 

Decided Cot. 4. 1890. 

Recorded Vol. 44, Page 272 . 

oOo 

MITCHELL, COLUJI SSI ONER: 

Applicant presents for registration a trade-marlc con- 
sisting of a somewhat complex design, in which is shown a horse- 
shoe "bearing the word "Standard." Inside the horseshoe is a tre- 
foil or clover leaf, and surmounting the horseshoe are three con- 
ventional acorns. 

Having described and represented the trade-marK as con- 
sisting of the elements thus eniimerated, the applicant states that 
the essential feature of the trade-marR is "the figure of an acorn/' 
The examiner objects to this statement as to the essential feature 
of the trade-mark^ and states that "when the figure of an acorn, 
"which is claimed as essential in this ease, is represented on the 
"mounted copy, it is probable that registration will be allowed," 
He insists, moreover, that so long as the trade-marl\. is represented 
in the present form, the claim should be for throe acorns sunaoimt 
ing a horseshoe. The applicant states that he prefers to claim an 



79> 

6 /<b> 



^mm 



■ 



Metropolitan Watch Co., Sheet -2- 
acorn as the essential feature, regarding the other features as 
non-essential, and does not wish this mark restricted in the man- 
ner proposed by the examiner, and the prayer of the petition is 
that the examiner may be advised that his requirement should not 
be Insisted upon. 

In his answer the examiner states that registration of 
the trade-mark has not been refused, but that applicant has sii^ply 
been requested to show iii fae'Sim.ile his trade-mark as used; that 
is, if the mark consists of a single figure of an acorn, to show 
such single figure unassociated with other matter; that the sole 
purpose of registration is to announce or advertise to the public 
the actual trade-mark used by applicant; that no person seeing ap- 
plicant's trade-mark stamped upon merchandise associated with the 
word "trade-mark" would imagine for a moment that its trade-mark 

character resided in a single one of the acorns shown, nor would / 

i 

any such person be deterred from adopting a trade-mark bearing one I 
or more acorns in different relations from those shown by appli- 
cant .or imagine that he could be prohibited from doing so as an 
infringement upon applicants rights, 

I have no doubt whatever that the examiner's position is / 
correct. The essential feature of a trade-mark is not that v^hich 
the registrant ele;j^ct8 to designate as such, but that which would 



7'> 




T3 



74 



r 



Metropolitan Watch Co., Sheet -S- 
strilce the public mind as its most salient feature and as lending I 
character to the entire marS., It cannot be said of a trade-marlt 
consisting of three acayrns that its essential feature is "an 

1 

acorn," much less can it "be said that one acorn constitutes the 
essential feature where a horsehoe is a part of tlie mark which 
certainly would strike the eye of the observer as quite as essen- 
tial as the acorns. 



74 



m 



mmm^mmmm ^'m^sm^mw^mmmil^lfgllfgllK^ 



76 






* 



■■ 



(3 A P P L I. C. A T. I. ^ H. 

I Of 

ARliO.LDU^ C.. A. IT^LET, 

Decided Dec. 12, 1890 . 

Recorded Vol. 45. Pap.e 49. 

oOo 

FISHER, ASSISTANT COLEIISSIOIIER: 

This is a petition taken from the refusal of the examiner 
of trade-marks to register the v/ord "Monogram" as a trade-mark for 
gin. 

The refusal of the examiner is based upon the ground 
that the word "Llonogram** is a generic term and no one has a right 
to monopolize the use of such a term as a trade-mark and thus cov- 
er all specific marks which may 'oe included under the genus. It 
Is undoubtedly true that generally speaking generic terms are not 

proper subjects for trade-marks. Sucdi a word as "cross" for exam- 

niunber of 
pie, which is a term including a.well defined specific forms, or 

"star", which is of the same character, properly come vrithin the 
rule; but the word "monogram", which does not include any definite 
form, seems to me not to be within the rule. ' The number of mon- 
ograms T/hich may be used is almost infinite and no one of them is 
well defined, since their form depends entirely upon the fancy of 



76 



A.C.A.Nolet, Sheet -2- 
him vrho combines the letters or figures; neither is there any ge- 
nus "monogram" of which all others are trell knoim species. A bar- 
rel or bottle of gin bearing a specific monogram would not be svcp- 
posed by the public to be "monogram gin," but the letters which ' 

ompose the monogram and their form and arrangement would be to 
them the distirxguishing marfc. If the monogram should be composed 
of the letters "S. D. T.," the gin would doubtless be Icnown as 
"S. D. T. gin," and not as "monogram gin," and the use of the word 
"monogram" would thereafter not be calculated to deceive or mis- 
lead. Besides, every dealer in or maker of gin who designates his 
particular brand by his monogram is not thereby entitled to the 
exclusive use of the word "monogram.." Such use extends only to 
the particular monogrson which he has adpted as his commercial sig- 
nature .and it is only a mark which includes such monogram by which 
he can be injured. I therefore thinlc that there is no valid ground 
for refusing registration to the word "monogram •» and the decision 
of the examiner of trade-marks is overruled. 



^i^ 



76 



. 7' 



m^tmimf^^^^^m^ 



"■P^iViiOTP 



6& 



9 



1 ^ 

'"" A P P L I. C. A 1 I. 0. N 

Of 

"'■>; POREE TOBACCO COM PAH Y, 

Deoided Dec» 18. 1889 . 

Reoorded Vol. 41, PaF!;e 426. 

— ; OOO 

MITCI-IELL, COIvn.iI SSI OlIER: 

Applicants seelc to register as a trade-mark for chewing 
tobacco the following words - "10 Cents for each One Dollar." 

The application states that this trade-marlc has "been used 
continuously in business by applicants since June 15, 1889; that 
it is used in coiniaerce by said firm with the tribe of Oneida In- 
dians, in V/isconsin; that it has been the practice of applicants 
to print or lithograph it on paper labels and affix it directly jro 
the plugs of tabacco;,and upon cards and labels for advertising 
purposes. It is further stated in the application that these 

words - 

"have generally been arranged as sho^ra in the accompanying 
fac simile, in vfhich the words 'Save this tag - it is good 
for' are usually printed in white letters on a blaclc baclcground 
at t'\e head of a paper label, while beneath the same are pla- 
ced the figures and words '10 cents' in red letters on a yel- 
low background. Beneath this via usually place an oblong or 
oval red band, bearing the words 'Foree's Special' in white 
letters, with a round red disk on a shaded bacskground in the 



i & 



I 



9 



Poree Tot)aeco Co . , Sheet -2- 

center of said oval band and beneath this band we usually ar- 
range in one curved line the words 'for each one dollars,' 
and in the next line below the words 'worth of goods.' and in 
the line below this, in one line, the words 'you may buy of, 
while below this is a space in v/hich may be printed the name 
of any desired individual or firm, and below this in fine line 
the words 'They will pay you one dime.' and below this, in a 
line, the words 'fpr one of these tags,' all as shown in the 
fac simile; but all these details of the arrangement of the 
lines, style of lettering, and color, and arbitrary symbols 
are imzaaterial and may be varied at pleasure or altogether 
omitted, and other words or symbols substituted therefor, if 
desired, without materially altering the character of our 
trade-marlL, the essential features of which are the arbitra- 
rily selected words and figures '10 Cents for each One Dol- 
lar.' » 

It may perhaps be true that the v/ords which applicants 

alleged 
have selected as the essential features of their.trade-m^rls. would 

A 

constitute a lawful trade-marS. if cut out or set apart from the 
rest of the words with which they are used; 'but the difficulty is 
that applicants have never used them separated; indeed, it would 
defeat the very object applicants have in view, that is, increas- 
ing the sale of their tobacco because of the value of their label. 
The object of a trale-marlc is to point out distinctively 
the origin or ownership of the article to which it is affixed;or, 
in other words, to give notice who was the producer, (Ceinal Co. v 
Clarlk, 13 V/all.,322.) Its object is to indicate, either by its ■ 
own meaning or by association the origin or ovmership of the arti- 
cles to which it is applied. (Pepper v. Labrot, 8 Fed. Rep. ,29.) 



mm 



1» 



, ^^w 



4 9 




■»..»».■ m ^immmmi^'iam 



80 



I 



I 



Foree Tobacco Co., Sheet -S- 
It is a representation or substitute for the oivner's signature. 
( SchiunaXer & Ettlinger v. Schvreiike, Jr.,et al., CD. ,1006, 319.) 
It cannot he a thirig having a distinct comriercial value of its own 
(Hoeb et al. v. Bishop et al.,49 0,G.,1Q45. ) The latter case ap- 
pears to have been elaborately argued, and well considered. It was 
held therein that a small metallic frame containing a portrait 
fastened to a pin, so as to be used as a personal ornament or cam- 
paign badge, did not constitute a valid trade-mark when so attach- 
ed to and sold with a cigar as to be readily detached. The court 
said: 

"It is to be borne in mind that a pin is attached to and sold 
with each cigar. It is clear that in that condition the pin 
answered a purpose other than that of a trade-marK. It as- 
sisted to sell the cigar because of its own value. Perhaps 
it is not too much to say that the pih would often form the 
principle inducement of the sale. The device is of the same 
sort as that so corni.'ion nowadays, whereby a shop-keeper gives 
to each purchaser of a particular article a toy, a picture, 
or soniething else as an inducement to the purchase. If the 
attachment of the pin to the cigar served only the purpose of 
a mark, tiie arguments of defendants might be sustained; but 
the difficulty with their position is that it serves the dou- 
ble purpose of a mark and of adding by its own value to the 
value of the article sold." 

The court said, however - 

"The question is not free from doubt or difficulty, and 
authority on the point is scanty. Perhaps all that can be 
said of the adQudged cases is that they tend to establish the 
proposition that a trade-mark is not a thing in itself capa- 
ble of ownership. (47 Am. Dec. ,205, note.)" 



80 



I 



Foree Tobacco Co., Sheet -4- 

In the case of Harrington v. Libby, 14 Blatchf .,128, a 
claim to the exclusive use of a tin pail to contain paper collars 
and sold Trith the collars was denied, on the ground that it would 
be against public policy to permit any one to monopolize such a 
use of a v/ell-known article of cocEierce. 

In the case of Moonnan v. Hoge, 2 Sawyer, 78, a similar 
right to the use of a barrel of peculiar shape was claimed, but 
the claim was not sustained. 

It is contended oy applicants in the pending case that - 

"These words and numerals do not form, in themselves, an 
intelligible sentence, but serve to identify the goods, which 
are now called for, in the stores by the above-named words. 
Our client has adopted them as a trade-marlc for chewing to- 
bacco. No one else has ever used these words as a trade-marlfc 
nor can we see any analogy between such use and the attempt 
to monopolize a tin pail as a trade-mar^, as in the case cit- 
ed by the examiner." 

The trouble with the words sought to be registered is 
that they do, in connection with other words, fonn an intelligible 
sentence pointing to another source of profit than the reputation 
of the maker. Tlie label as a whole has a value wholly distinct 
from any tendency to show origin or ownership. It is of no impor- 
tance that the value of the so-called traae-maric consists in its 
purchasing power or exchangeable worth rather than in its intrins- 



■■ 80 





81 



■'"^••^^^■■•^ 



^ 






Poree Tobacco Co., Sheet -5- 
ic worth. The object of the label is to cause the sale of the 
article to which it is affixed, not by pointing to applicants as 
the makers of that article, but by advertising an opportunity for 



{ 



exchanging the label itself for a dime with the retail dealer sel- I 
ling the tobacco. The case of Hoeb v. Bishop, supra, is quite in 
point. 

The examiner is sustained and the petition denied. 



h 




83 






84 



i 



D 




APPLICATI 0_1I 

of 
A. G. H Y D E & ^ 0. IT S., 

Decided Jan. 19, 1891 , 

Recorded Vol. 45. Pap.e 246 . 

oOo 

PI SPIER, ASSISTANT COivMISSIOlIER: 

This is a petition taken from the refusal of the examin- 
er of trade-raarlcs to register the word "Berlin" as a trade-mark 
for the cotton goods known as silesia. 

The refusal of the examiner is based upon the ground 
that "Berlin" is a geographical name. In the recent cases of the 
Dover Stamping Company, ex parte, 51 O.G.,1704, and Jenkins, ex 
parte, 53 O.G.,759, the question of geographical names with re- 
lation to their use as trade-marks was discussed and a conclusion 
reached that where such names are used in a purely arbitrary or 
fanciful sense they may be lawful trade-marks. It appeared in 
both cases that the party seeking to register had for some time 
used the mark; that he iiad no connection with the tofm or city 
bearing the name sought to be registered; that it was not shown 
that such place was well known as producing the article to which 
the mark was to be applied; and that therefore no one would be 



91 



t^lM 



A. G. Hyde & Sons, Sheet -2- 
deceiveci or wronged. The same fact appears in this case, and both 
decisions are therefore to be considered as authorities for the 
registration of the trade-marlc in question here. 

As the point seems to he made by the examiner, it may be 
well to say that I do not thinlc the burden is upon the applicant 



for registration to show that the place bearing the geographical 



f 

name is not noted for its production of the article to which the 
name is to be applied. It is for the office to show that it is so 
noted, and if this is doubtful, the benefit of the doubt should be ;; 
given to the applicant and the registration permitted. 

The decision of the examiner of trade-marks is overruled 






,S4 



85 



86 



APPLl^AT.I.0.1. 
I Of 

\A ABRAHAMITEWMAK, 

Decided Feb, 15. 1891 . 

Recorded Vol. 45, Page 450 . 

oOo 

FISHER, ASSISTAIIT COLLII SSI ITER: 

Tills petition is tsiken from the decision of the examiner 
of trade-marlvs refusing to register a label presented by the pe- 
titioner. 

The examiner's refusal is based upon three grounds: 
First : That the matter presented is not a print or label^ 
but an article intended to used as part of an apparatus. 

Second : That the title presented does not appear upon the 
so-called label; and. 

Third : That certain pictorial matter appearing in the cen- 
ter of the so-called label is matter which might be registered, if 
at all, as a traae-mark. 

As to the first objection the so-called label which is pre- 
sented in this case is a dial for use upon a watchman's clock to 
receive certain records which are to be made by the ?/atchman, and 
which is intended to revolve once in forty-eight hours. It does 



86 




I 



A. WcTnn4n, Sheet -2- 
not appear that the label is intended to "be placed upon the olocik 
for the purpose of Indioating its contents, which is the office of 
a label, but it is a necessary and material part of the clock, its- 
elf and one which performs a given fiinction in its operation. 
Such articles it has been held are not proper labels, and I see no 
reason to doubt the correctness of such ruling. 

In the case of Carney, ex parte, 27 MS. D.,113, the 
thing sought to be registered as a label v/as a disc of thin paper 
bearing the ordinary figures and graduations usually placed upon 
watch dials printed upon it so that when pasted upon the inside of 
a watch crystal the figures could be read from the outside. It 
appearing that the object of this print was one of a purely func- 
tional nature, it was held that it could not be registered as a 
label, but that if protected at all it must be under the sections 
of the statute relating to the protection of inventions by letters 
patent. The print presented in the patent to Carney is closely 
analogous to that presented in this case and the decision is there- 
fore one of special pertinence. 

In the case of Gordon, ex parte, 12 O.G., 517, It was 
held that a device which entered into the mechanical structure of 
an article was not an arbitrary symbol such as the law contemplates 



86 



S7 



oS 



•I 



if 



A. Nermian, Sheet -3- 

and was therefore not registraTble as a trade-marlc. In that ease 

it was said: 

"The intent of the trade-marS. law is to afford protec- 
tion to symbols and not to inventions or mechanioal devices. 
It being a conmion rigiit to use any mechanical device which is 
deemed useful, the use of which is not restricted by a patent; 
it would seriously embarrass trade if, in the present instance 
the exclusive right should be given to applicant to use his 
device as a trade-mark." 

There is no difference in principle between the Gordon 
case and the present one,, even though in that case a trade-mark 
was involved and in this, a label. 

A similar case to this arose in Smith, ex parte, 28 MS. 
D. ,164, in which registration of a label was refused upon the 
ground that the thing sought to be rcgistere^d was intended to per- 
form a mechanical function. These decisions seem to be decisive 
of the propriety of the first ground of objection raised by the 
examiner. 

As to the second objection that the title does not ap- 
pear on the alleged label, it is enough to say that in a similar 
case, Lutz, ex parte, 33 O.G.,lo89, a simiilar objection urged by 
the examiner was held to be proper. See also Marsh v. Warren, 13 
0. G., 7. 

The third objection is that the so-called label contains 



^» 




III! J ■i^i,iji^.Miw^Bi.y*^,^ji'i«iw«w.iipgip ■. ii.-.i""ipi.<,; 



^FW^»«if*^^ 



A. ITe?.Tnan, Sheet -4- 
matter v/hich, if registrable, in properly registrable tinder the 

trade-marlc act. This holding of the examiner is based upon the 

\. 
facst that the matter referred to might properly constitute a trade /"^ 

/ 

mark, and it has been held by the office through a long course of 
decisions that such matter cannot properly be registered as a la- 
bel. In support of this statement it is enough to refer to the 
decisions of Snoo^ v. Halbe, 40 MS. D., 423; Colimbia Sewing Ma- 
chine Company, ex parte, 41 MS. D., 228; and Pield, ex parte, 41 
MS. D., 275. 

As I am of opinion that all the objections of the exam- 
iner are well taken, his action in refusing to register the de- 
vice presented as a label is affirmed. ^ 



oc 




89 






w 



«? w 



^ 1 

r 







(' 



G 



V\ 



I 



Of 
ii^RAC.E 1. I.^O.DBURY, 

Decided Feb. 21.1891 . 

Reoorded Vol. 46, Pap:e 14 . 

oOo 

MITCHELL, COl!;BiISSIOIIER: 

This is stated to be a petition from the examiner's re- 

, fusal to register as a Trade-LIarlc 

"the representation of lace." 

Applicant states in his application as follov/s: 

«*My trade-marlc consists of the representation of lace. 
I usually employ it in the form of a label of gilt paper, 
square In shape, Y/ith a circular central unperf orated portion 
as shown, but any or all of these features may be varied with 
out altering the character of the marX, the essential feature 
of which is the representation of lace. This trade-mark I 
have used continuously in lay business since December 23,1889, 
The class of merchandise to which this trade-mark is appropri- 
ated is alcoholic beverages, a::d the particular description 
of goods comprised in sucli class upon which I use the said 
trade-mark is fine wines and alcoholic liquors. It has been 
my practice to affix the label to the bottles and packages in 
which the goods are contained." 

The last action of the examiner was as follows: 

"This case cannot be further considered until the essen- 
tial features of the trade-mark are set up so as to give it a 
distinct and decided character. A representation of lace 
merely, without reference to shape, color or form of presen- 
tation will not be considered." 



' 90 



1 




H. S. Woodbury, Sheet -2- 

It is oontended on behalf of applicant; 

" First , that the form of words adopted "by the applicant is 
that prescribed by the Patent Office and repeatedly approved 
by it in practice. 

Second, that the form of words is essential to the proper 
protection of the applicant's trade-mark rights in the prem- 
ises." 

To sustain the first proposition he cites a number of 
decisions which he says are to the effect that "in previous decis- 
ions of the Patent Office and Courts, trade-marSis consisting of 
•the representation* of a thing, siid so described, have repeatedly 
been sustained." One of the decisions relied upon by applicant is 
the case of ex parte Peper, C. D., 1079, 221; 

In that case Mr. Commissioner Paine held that an alter- 
native form of trade-mark seemed to be warranted by the authori- 
ties, and that these authorities should be followed until the rules 
or more explicit legislation shall change the practice, though if 
the question were an original one he should be inclined not to al- 
low such registration. 

He held further that the statutory requirement of a fac- 
simile of a proposed trade-mark v/as mandatory; that it had not been 
complied with in that particular case, and that a likeness of a 
kernel of corn was hot a fac simile of the word "Corn" any more 



10 




1 

^ 



91 






t 



,»/ 



r 



H. S. V/oodbury, Sheet -3- 
than was a .^ac simile of the word "Corn" a fac simile of a kernel 
of corn. 

In the case of llorrison et_ al. v. Case et_ al . , 2 0. G. 
544, the trade-mark consisted of the words "The Star Shirt"; also, 
the words "The Star Shirt" with the device of a six pointed star 
used in connection therewith; and, also, the device and words 
"The \/^ Shirt"- either one or all being used as convenience re- 
quired, 
y Shlpman, J., held that this was a lawful trade-mark, and 



A 



caldulatcd Co -deceive. 



In the case of ex parte American Lubricating Oil Company 
9 0. G. , G87, applicant sought to register the word "Star" as a 
trade-mark to he used on packages containing lubricating oil, but 
registration was refused because the proposed mark so nearly re- 
sembled that of the Galena Oil Works as to be likely to deceive 
the public. The registered mark of the Galena Oil Y/orks consisted 
of the figure of a star, which embraced the letter "G, " and was 
used upon the same class of -Merchandise as that to which applicant 
proposed to apply his mark. 

In the case of ex parte Weaver, 10 O.G., 1, it was held 
that the designation "Lion", whether expressed pictorially or by 



9^ 



^ 



"3 



H. S. WoocJbuty, Sheet -4- 
the written or printed word "Lion," is a proper subject for a trade 
mark, and shoiild be treated as one trade-mark. 

Granting that the statutory requirement of a fao-simile 
of the trade-mark sought to be registered by applicant has been 
complied with, it appears from the contention of applicant in his 
brief that he must be already protected by the registration of the 
word "Lace;" for he says as follows: 

"Applicant /'Jias^^ready,., registered to him the word 'Lace' 
as a trade-marlc for the"'saiae class of goods as that to which 
the present case relates. 

"See trade-mark #18,027, June 10, 1890. 

"It is essential to his proper protection that he should 
also have registration of the representation of lace , as well 
as the word lace , inasmuch as the cotirts have held (see au- 
thorities cited above) that the use of one would be an in- 
fringement of the other," 

If this be correct, then applicant is already siifficient 
ly protected. Still, inasmuch as applicant may be in error as to 
the correctness of the statement last above quoted, it is necessa- 
ry to determine whether he has complied with the requirements as t 
to obtaining registration of a trade-mark, for even supposing that 
his goods had become kncTn by the use of the word "Lace," yet the 
use of a representation of lace on the same class of goods by some 
one else might not convey to the ordinary purchaser the impression 
that he was buying the goods of the person who used the word "Lace 



92 



93 



1 



94 



"-fy^T^'T"!' 



r 



I 



H. S. WoocTDury, Sheet -5- 
as a trade-inark. It is a different case from those above cited. 

It is also to te borne in mind that in the mat:.er of an 
application for trade-mark the question before the Cora;:jissioner 
for decision is "the presimptive lawfulness of claim to the alleg- 
ed trade-mar^," (see Sec. 3, trade-marlc act, March 3,1881,) and 
that the registrant is not given any property right which he did 
not have prior to the registration with respect to the ownership 
of the trade-mark. 

It is perhaps doubtful whether applicant is entitled to 
register a trade-mark so broad as that for which he seeks regis- 
tration, in view of the recent decision of the Supreme Court in 
New York Belting and Packing Company, v. New Jersey Car Spring and 
Rubber Company, 54 O.G.,135, where Mr. Justice Bradley said: 

"We are in the habit of regarding a design as a thing of 
fixed individuality of appearance - a representation, a pic- 
ture, a delineation, a device." 

So, in the present case, it is, as above stated, perhaps 
doubtful whether or not, when a person speaks of a representation 
of lace as the subject of a trade-mark, it may not mean a repre- 
sentation "of distinct and fixed individuality of appearance," 
that is, some specific representation of lace. On the other hand, 
it would appear to be unjust to limit applicant to the particular 



9 



H. S. Woodtury, Sheet -G- 
representation of laoe as shown and described in his application 
and thus enable others to easily change the representation and 
thus avoid the charge of infringement. 

In view of the fact that, if representation were allow- 
only 
ed, applicant would be entitled to protection in a court of compe- 
tent jurisdiction to the extent of the ownership of his actual 
trade-mark - whatever it may be - he should be given the benefit ' 
of the doubt, although applicant has asserted that he has a trade- 
i]iari. for the word "Lace," and that a person using»a representation 
of lace" would infringe. 

In the examiner's answer it is stated that there has 

been no formal rejection of this case, and that the examiner is: 

not disposed to assert that true trade-mark matter is not disclos- | 

i 

ed. Prom an examination of the last two actions of the examiner 
it is held that they should be considered as refusals to register 
the traive-mark and amount in effect to a rejection. 
The petition is granted. 



¥ 



94 



K. 



9.- 



of 

H. J. HEINZ £O.MPANY, 
DeoldGd March 28.1891 . 

Re corded Vol. 4G, Page 218. 

oOo 

MITCI-IELL, COLCvil SSIOTJER: 

[This is a petition from the action of the examiner re- 
fusing to register a latel. This label, so called, is intended 
to be used on vessels containing mince-meat, and a large part of 
said "label" consists of a colored picture of meat, fruits, spices, 
etc., to be used in the manufacture of mince-meat. 

Applicant contends that the pictorial matter indicates 
the nature of the contents of the vessel, because it represents 
pletorially the constituent parts of mince-meat. 

The examiner holds that the pictorial matter is evident- 
ly fanciful and not descriptive, and, being fanciful, can only be 
considered a trade-marlfc. He says also: 

"A picture of mince-meat might properly be included in a 
label for mince-meat, but a fanciful grouping of a variety of 
fruits and meats cannot be so considered. A representation 
of an ox might be proper trade-marS. for corned beef, and it 
would not 'be a valid objection to it as a trade-mark that the 
picture represented the source of the product; a fanciful 
representation of grapes is recognised as a trade-mark for 



m 




m 



H.J. Heinz Co., Sheet -2- 

wine; the representation of a Itangaroo as a trade-marlc for 
shoes male of kangaroo leather, of a sheaf of wheat for flour/ 

The examiner cites the following decisions: ex parte 
Simpson & Sons, CD. ,1876, 148; ex parte Ivloodie. CD. ,1084, 35; 
Moodie v. Butterworth, CD. ,1085, i; ex parte Wiesel. CD. ,1886, 
2S; ex parte Snooks & Halhe, 40 MS. Dec. ,423. 

The applicant refers to ex parte Diamond Laboratory Co., 
44 MS. Dec, 18, decided by the present Commissioner, in which case 
a mere subsidiary figure was disregarded, in view of the fact that 
the principle symbolical figure had been registered as a trade- 
mark. The difference between that case and the present is appar- 
ent. In that case it was intimated that if the registered sprig 
of marshmallow had not been a part of t'-ie label the result might 
have been different, 

I am of the opinion that the position taken by the ex- 
aminer is correct and is stipported by the decisions cited, I 
therefore affirm his action in refusing registration. 



m 



1 




^ 



r 



I 



- i^in 



L/ APPLI.C.AT.iO.K. 

Of 
NO.RMAN LI.C.n2Y, 

Decided May 6. 1091. 

Recorded Vol. 4G, Pase 422. 

oOo 

MITCHELL, COimiSSIOIIER: 

This iG a petition from the action of the examiner refus- 
ing to register as a trade-mart a device consisting of the words 
"Headache Capsules," as applied to a medicine for curing headaches. 
The examiner holds that the words used have no fanciful or arbi- 
trary character, but constitute ordinary descriptive language, cit- . 
ing ex parte Heynan, CD., 1880, 194, and ex p.arte Brigham, C.D»1881 
58. To these may be added the following cases where registration 
has been refused on the same grounds as those taken by the examin- 
er in .the present case: C. L. Hathaway & Sons, CD., 1871, 97; 
R. J. Roberts, CD., 1871, lis; S. Palmer, CD., 1871, 289; Blalces- 
lee & CO., CD., 1871, 142; ex parte A l den, CD., 1878, 142; ex 
parte The Safety Powder Co., CD., 1879, 117; ex parte Aias. C D., 
1883, 10; ex parte Kipling, CD., 1883, 54. The lar as set fortlt 
is these decisions is believed to be in accordance ^7ith v/hat is 
said by the courts in Town v. Stetson, 3 Daly, 53; Larabee v. 



K^ ieac 





nck ■{■ 






N. Liclity, Sheet -2- 
Lewis, 25 Alb. L. J., 203; Ginter v. Kinney Tobaoco Co., 12 Fed. 
Rep., 782; Ayer v. Rushton, 7 Daly, 9; Hecht v. Porter, 6 Pac. C. 
L. J., 569; Canal Co, v. Clark, 13 Wall., 322, and other decisions 
I am of the opinion that the position of the examiner im 
correct, and affirrn his decision. 



r?s 



1 




09 



100 



A P P L 1 C. A 1 1 0. 1 
/ / Of 

^7\ lllllilAM I'NEIHALL, 

Decided May 20. 1891. 

Recorded Vol. 47. Page 22. 

oOo 

MITCHELL, coj/B/ii SSI oner: 

This is an application for the registration of a trade- 
mark for silverware, v/hich is said to consist of the representa- 
tion of an old woman, dressed in an ancient costiane and leaning up- 
on a staff, and a cat brushing against the skirt of her garments. 
In the drawing the figures are represented in relief upon the han- 
dle of a spoon, and arranged diagonally "beneath the figures of the 
woman and the cat is the representation of the autograph of "Moll 
Pitcher," and beneath these words is the word "Lynn," produced in 
artistic letters, arranged one above the other; The essential fea- 
ture of the mark is declared to be the representation of the old 
woman and the oat. 

The examiner rejects the application upon the groxind 
that the matter shown and described does not constitute true trade 
mark matter. He adds that it is probably entitled to considera- 
tion as an ornamental design for spoons and flat ware, the trade- 



r 



I0(! 



^ 



-int 



W. p. Newhall, Shee t -2- 
marlc law not being Intended to give protection to devices which, by 
their useful afitr ornamental character, add to the coitmercial value 
of the articles to which they are applied. 

The applicant now pyetends that he has presented trade- 
mark subject-matter; that he has presented such matter in proper- 
form; that he has complied with all the statutory requirements-, 
and that if the trade-mark be disassociated from the spoon repre- 
sentation all question as to the true trade-mark character of his 
figures will disappear. 

The "spoon representation" refers to the fact that the 
drawing accompanying the application discloses not only the sup- 
posed trade-marK, but also the handle of a spoon to which it is 
applied in such a manner as to combine with the contour and sur- 
face ornamentation thereof, so as to give the pleasing effect of 
a nev; design for spoon handles. The applicant suggests in his 
brief that if he had represented his trade-mark on a butter-dish, 
salver, or other similar article of table-ware, or if he had pre- 
sented the mark separate from the spoon, doubtless no question 
would have arisen or objection been made, but that it was objected 
to as a design and not a trade-mark j be cause as matter of selection 
he illustrated his mark as used on a spoon handle. This sugges- 



f\^ 



^ 



101 



II 



.-5i' 






W. Po llGv/hali, Sheet -5- 
tion is doubtless well founded. If a tp. Q ' -^imile of the mark had 
been furnished, instead of a dra^vlng of a spoon handle illustrat- 
ing the application of the mark to it, no oomplication would have 
arisen, due to the fact that tho mark, taken in eonjiection with 
its surroundings, constitutes, or might he claimed to cohstitute, 
an omanental design for a spoon handle, 

I agree v/ith the petitioner that the representation of 

the old woman with the cat and other devices may constitute a val- 

J 

i^" trade-Liark, and that any ornamental suggest iveness which they 

may possess v;hen used as a mark is in no way material. But it 
should be remembered that the statute of March 3, 1881, relating 
to the registration of trade-marks, provides for recording "a de- 
scription of the trade-mark itself, witli fac simile.s thereof ." A 
fac simil e of a trade-mark is a representation, of the iiiark, with 
out less or more, A fac simile drawing, such as Rule 9 of the 
Trade-Mark Rules calls for, is a drawing of the trade-mark, with- 
out less or more. Both the statute and the rule go upon the theo- 
ry that the fac simile or the fac simile drawing will be limited 
to the representation of the trade-mark, and that the mode of its 
application will be prescribed in the "statement of the mode in 
which the same is applied and affixed to goods," which is required 



w 







W. F. UeT/hall, Sheet -4- 
as one of the conditions of obtaining registration of trade-marks. 

The requirement of the statute as to fac similes should 
not "be relaxed, *here, upon so doing, a question waild legitimately 
arise as to v/hether protection should not be sought under the law 
authorizing the patenting of designs. 

This case is remanded to the primary examiner, v/ho will 
exercise his Judgment as to whether the requirement for a fac sim- 
ile drawing of the trade-mark may properly be waived. Upon com- 
pliance with his decision, registration may be had. 



i 



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O 




1 



103 



T 



106 



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I 



\ 



APPLI.C.AT.XO.N 
of 
T,]HE RO.GER^ lEliC.E C.^MPAliY, 

Decided July 30,1891. 

R ecorded Vol . 47. Pa^e 599. 

oOo 

PROTHIlIGIiAM, ASSISTAIIT COLILIISSIDUER: 

This is an aopeal taken from the action of the examiner 
refusing to register as a trade-mar!fc the Virords "Superior Lawn 
Mower . " 

As shown in the fac-simile accompanying the application, 
the trade-mark consists in a perspective viev/ of a lavm mower with 
the words "Superior" arranged above the illustration and "Lawn 
Mower" below. There are also various minor details. 

The application expressly says, however, that the pic- 
ture may be omitted, and that the essential feature of the trade- 
mark is the words "The Superior Lawn Mower." 

The examiner refuses registration upon the ground that 
the word "superior" is "an ordinary adject iva of the language used 
by every one to express quality." He doos not deny that the fac 
simile shows registrable trade-mark matter, but only that the 
words "The Superior", tised by themselves .are not registrable. 



J 



'^ 



^- z^lM 



-k r\,M>i 



\ 

T 



Rogers Penoe Co . , Sheet -2- 

The applicant olains that the words In question are used 
to designate a particular machine as distinguished from other ma- 
chines and refers to trade-mark, ^17,881, in ^hich the words "The 
Splendid" were allowed to be registered by the office. Ke also 
says that the word "Superior" as used is not an adjective but a 
noun, the "name of the macliine." It is, however, to be observed 
that the essential feature of the alleged trade-mark is not the 
word "superior," but the words "The Superior Lawn Mower," as above 
stated. Applicant has, moreover, admitted during the prosecution 
of the case that any person having a lawn mower may state on his 
labels that it possesses superior qualities. 

A trade-mark is "an arbitrary symbol affixed by a manu- 
facturer or merchant to a vendible com;r-LOdity, " (Browne on Trade- 
Marks, 2 Ed., 2,) and is used to denote "the origin or otmership 
/. 13 Wall., 311.) ^^ ^ ^ f ' 

It is Yrell settled that words and phrases, which have 
been in coiriir.on use, and which indicate the "character, kind, qual- 
ity, and composition" of the article to T/hlch they are affixed, can 
not be exclusively appropriated by any. one. (See Browne on Trade- 
Marks, 2 Ed., Sec. 20; Canal Company v. Clark, supra ; Amoskeag llan- 
ufacturing Co. v. Spear, 2 Sand., 599; Manufacturing Co., v. Trainer 



ff 106 



■Ha« 



107 



'108 



T 



"i Aa 



Rogers Fence Co . , Ghoet -5- 

101 U.S. ,51; The Brown Chemical Co. v. Meyer et al.,55 O.G.,287.) 

In the recent decision of the Supreme Court in the case 

of Lawrence Ivlanufacturing Co. v. Teni.essee llanufacturing Co., 55 0. 

G.,1528, the court, after quoting with approval Canal Company v. 

ClarS, supra, said: 

"ITothin^ is ■bet:er settled than that an exclusive right 
to the use of words, letters, or sjnn'bols, to indicate merGly 
the quality of the goods to which they are affixed, cannot "be 
acquired. And ?/hile if the primary object of the marlj. be to 
indicate origin or ownership, the mere fact that the article 
has obtained such a wide sale that it has also become indica- 
tive of quality, is not of itself sufficient to debar the 
owner from protection, and raalce it the common property of the 
trade, (Burton v. Stratton, 12 Ped. Rep. , COG, ) yet if the de- 
vice or symbol was not adopted for the purpose of indicating 
origin, manufacture ©?~ ownership, but was placed upon the ar- 
tide to denote class, grade, style, or quality, it cannot be 
upheld as technically a Trade-Mark." 

The question simply is, so the words "The Superior Lawn 
Mower" indicate simply the quality of the machine, as distinguish- 
ed from other machine;^ or do they indicate origin or ownership? 

I am of the opinion that the words are not "merely arbi- 
trary" and that they do clearly indicate quality, and that any 
manufacturer of lawn mowers would be entitled to use them in the 
same way as the applicant does, so far as the trade-marX law is- 
concerned. 

It is v/e 11- set tied that no one has the right to appro- 



r 



lOS 



ino 



Rogers Pence Co., Sheet -4- 
priate a sign or syrabol or a name whicli, from the very nature of 
the fact it is used to signify, others may employ with equal truth 
and, therefore, have an equal right to employ for the same purpose 
(See Corbin v. Gould, 135 U. S., 308, and oases there collected.) 
The decision of the examiner is affirmed. 



lOS 






109 



i\> 



/ 



Of 
MARSHALL & C.O.MPAHY, 

Deoided July 23,1891. 

Rec orded Vol. 47. P ap;e 412 . 

oOo 

PROTHINGIiAIJ, ASSISTANT COLL. I SSI ONER: 

This is an appeal taken frora the action of the examiner 
refusing to register as a trade-mark for thread, the word "Kear- 
ney." 

The exaininer refuses registration upon the ground that 
the word "Kearney" is merely a geographical name, indicating the 
place of production, and not the producer. The applicant relies 
upon the case of ex parte Dover Stamping Company, 51 O.G., 1784, 
and the authorities cited therein to sustain his position, and 
claims that the word is used "in an arbitrary and fanciful sense," 
and that he is entitled to a registration thereof. 

It appears that "Kearney" is the name of a small place 
near Uewark, Nev; Jersey, and that applicant has a thread mill 
there, which ho says is the only kind in the place. It is further 
stated that the locality called Kearney, if it has anything more 
than a local reputation, is largely owmg to the situation of ap- 



mmmm 



110 



sWsH 



Marshall & Co., Sheet -2- 
plicant's mills and factory at that place, aiid that this, so far 
as it is Icnown, arises largely from the use of the term as a trade 
mark of applicant for his thread. Purthermore, it is asserted 
that the thread so designated is sold from applicant's place of 
business in New Yor^, and that the purchasers thereof presumably 
have no knowledge whatever that the township in IJew Jersey, adja- 
cent to Newark, is the location of applicant's mills, or that the 
township' is named Kearney. 

It is also stated that in this township and near the 
mill was the residence of the late Genl. Phil. Kearney, and that 
this name, because of its association, was adopted as an arbitrary 
designation for the thread. 

Under all the facts of the case I am unable to agree 
with the examiner, that the word sought to be registered in this 
case is used merely as a geographical name, or that the case comes 
within those cases, for example, such as the case of Canal Company 
V. Clark, 13 Wall., 311, wherelt was held that the words "Lacka- 
wanna Coal" did not constitute a valid trade-mark, because they 
were merely used in their geographical sense-^and therefore became 
descriptive of a well known article of trade. 



110 



Ill 



i 



i' 



II ^^1 






Marshall & Co.,Ghoet -3- 

It cannot fairly "be said that the word sought to be 
registered is descriptive of the thread which applicant produces, 
since it is expressly stated that the name xrr.s adopted because of 
its asi-ociaticn with the name of Genl. Kearney, as above stated, 
and since no other mill exists engaged in making thread at Kearney 

The decision of the examiner is reversed. 



y 



tio 



113 




I 



114 



•W 



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w 








■7. ' 

^J APPLiC.AT.I.£H 

of 
R^BERX ALEXANDER, 

Decided. Aufc. 4,1881 . 

Recordod Vol. 47, Pa^e 458 , 

oOo 

FROTHIlTGKAii, ASSISTANT COI.B.II SSI ONER: 

The question in this case is wliether the trade-marit 
sought to be registered is so similar to any inarS: already'- regis- 
tered for use upon the seuae class of goods as to be caloulated to 
deceive purchasers using ordinary caution. (McLean v. Fleming, 96 
U. S., 245. ) 

The class of merchandise to which this trade-marlc is de- 
clared to be appropriated is "water-proof cloth", the particiilar 
description of goods comprised in said class upon which it is used 
being "damp course cloth" for general building and roofing pur- 
poses. 

The essential feature of petitioner's mark is declared 
to consist of the representation "of the roll of cloth partiallyy 
trawound. " It is apparent from an inspection of the mark as set 
forth in the fac simile thereof accompanying the petition, that 
it in effect amounts to the representation of a scroll, although 



114 



R. Alexander, Sheet -2- 

It is stated, to be in fact a roll of cloth partially unwound. 

The registered trade-mark cited by the examiner as a 
reference is that of P. Reddaway 8c Co., of Hamburg, Germany, 
#16,524, registered April 23, 1889, for "impregnated canvas, linen 
and cloth" used as a roofing material. Tlie mark of the reference 
consists essentially of a scroll. It is true that the lower end 
thereof turns in the opposite direction to that of tiie petitioner's 
and that it has upon it the picture of a house and the word symbol 
"anti-Glementum" which two latter features are also stated to be 
essential to the mark. Tlie scroll of the reference is also repre- 
sented as laid across and in front of a roll of fabric, but this 
latter feature is stated not to be an essential feature of the 
trade-mark. I am of opinion, however, that the scroll is the dis- 
tinguishing and the most noticeable feature of the registered 
trade-mark, as well as of that sought to be registered, and I con- 
cur in the opinion of the examiner that the latter would have a 
tendency to deceive and mislead purchasers having ordinary caution 

In a recent case decided by Comir.issioner Mitchell, it 
was stated as follows: 

"The right of registration does not extend to trade-mark 
the use of which would infringe pre-existing trade-marks. Im- 
itative marks infringe, not only when they contain the entire 
mark previously adopted, but also when they contain enough of 
the prominent features of the prior mark to be likely to 
cause purchasers msing ordinary caution tc be misled". 

The decision of the examiner denying the registration of 
the trade-mark is affirmed. 



114 



11: 



> 



116 



it- 



of 
J£HN B. BRUGGE R, 



Decided AufK. 29» 1891 . 

R ecorded Vol. 48, Page 84 . 

oOo 

PROTHIlIGKAlvI, ASSI STAIIT . COI£..:i SSI ONER : 

This is a petition taken frcui the decision of the exam- 
iner refusing to register as a trade-mark the words "Most Excel- 
lent." 

It is stated that the particular description of goods up 
on which the said mark is used is cigars, and that it is appli- 
cant's parctice to apply the raark to "boxes containing the cigars 
by means of suitable labels. 

The action of the Examiner refusing to register such 
mark is in the following language: 

"The words 'Most Excellent' being ordinary qualifying 
terms expressive of a high degree of nerit, are not seen to 
constitute such arbitrary and fanciful matter as is contem- 
plated by the law of Trade-Marks, and it is though" that , reg- 
istration can only be effected for the same by virtue of 
some association with arbitrary matter shown, or some partic- 
ular arrangement displayed." 

It is contended on behalf of applicant that these two 

words make an ungr ammat i cal expression, and that they should there- 



116 



^ ;».: 



J. B. Brus::or, Sheet -2- 
fore "be held to be expressionless and consequently non-descriptive 
and fanciful. 

I am not prepared to hold that such expression is un- 
grammatical as there seems to be authority for its use by some au- 
thors . 

It is further contended on behalf of applicant that the 
idea of the description or quality conveyed by these words is so 
remote that thei e is ground for holding that they are fanciful and 
arbitrary. 

A trade-marfe is "an arbitrary symbol affixed by a manu- 
facturer or merchant to a vendible comiiodity , " (Broirn on Trade- 
MarKs, 2 Ed., 2.) and is used to denote "the origin or ovmership- 
of the article to which it is affixed." (Canal Co, ^ v. Clark, 13 
Wall., 311.) 

It is well-settled that v/ords and phrases which have been 
in coxmaon use and indicate the character, kind, quality, and com- 
position of the article to which they are affixed cannot be exclu- 
sively appropriated by any one. (Canal Co. v. Clark, supra : Manu^ 
facturing Co. v. Trainer, 101 U. S.,51; The Brown Chemical Co. v. 
Meyer et al., 55 0. G. , 287). 

The question then for eon§ideration is simply, do these 



116 



11 



(^ 



Its 






J. B. Bnigcei", Gheet -5- 
words indicate the quality of the article to which they are af- 
fixed, or do they point distinctively to the origin or ownership 
of the article? In other words, do they give notice who was the 
producer? 

I am of the opinion that these words are not merely ar- 
bitrary and that they do indicate quality to such an extent as to 
prevent their "being registered, and that any manufacturer of ci- 
gars would "be entitled to use then in the some way as applicant, 
so far as the trade-marlc law is concerned. 

Furthermore, it is well-settled that no one has a right 
to appropriate a sign or a symlDOl or a naiae which, from the very 
nature of the fact it is used to signify, others may employ with 
equal truth, and, therefore, have an equal right to employ for the 
same pulrpose. (See Corbin v. Gould, 133 U. S., 308, and cases 
thete collected. ) 

The decision of the examiner is affirmed. 



^^ ■f«L.Jr3E_ 

118 



.9 




120 






1 



i 



f 



I 



..^v*><^ 



^ 



APPLiC.ATI.0.1i 
of 
EC.KER_& C.0.L:?AIIY, 



Decidod IIov. 20,18 91. 

Reoordo d Vol. 48, Pap^e 446 . 

oOo 

PROTHIIJGIiAlI, ASSISTAIIT COJ/DvIISSIOlTER: 

This is a petition taken from the action of the primary 
examiner rofusingto register an alleged label. 

The said label is stated to consist of- 



"An engraving showing the broiBrn stone steps and balus- 
trade at the front of a house, \Trith a cellar isrindow at each 
side thereof. A kneeling female figure in the act of scrub- 
bing the steps, with bucket and scrubbing brush near;- and 
with the words 'Ecker's Stone Mineral Soap' in ornamental let 
ters upon the design, Eelov/ the engraving is a description 
printed in ordinary type, of the uses to v;hich the soap can 
be put and for which it is particularly designed." 

The examiner refused to register the said label for the 
reason that, in his opinion, it included matter only registrable 
under the trade-mark law, and also for the reason that, even assiaa- 
ing that everything shown in applicant's print was actually de- 
scriptive, the la' el was not properly registrable in view of the 
decision of the Supreme court in the case of Higgins e t a 1 . v. 
Keuffel at al., 55 O.G.,lloG, and in viev/ of the Commissioners 



120 



Eolcer & Co., Sheet -2- 
declsion in ex parte Eldredge 5: Co. ,55 O.G., 1278. 

I an Inclined to the viexr that said label includes mat- 
ter only registrable under the trade-mark lay/ and therefore not 
registrable under the Act relating to the registration of Labels. 
(See ex parte Ruckstuhl, 55 O.G. , 027; .ex parte Heinz Company, 46 
MS. D., 218); but assuming that it is not registr-:ble irnder the 
trade-mark, law, it is clear that it ca:vi:ot be properly registered 
in the Patent Office under the act of June 18, 1874, relating to 
the registration of labels, in vievr of the decisions first above 
cited. ?rnether or not applicant is entitled to have his alleged 
label registered elsewhere it is not necessary for me to pass upon. 

The decision of the examiner is affirmed, 

-' y 






1 







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f 




A ZL k L 1 ^ 1 J 9. R 
of 

1 1 a £ E L L HALL, 

Decided Nov. 37,1801 . 

ReoordGQ, Vol. 48, Pa^e 478 . 

oOo 

FROTHIilGKAl^, ASSISTANT COI/II.ilSSIOlIER: 

This is a petition taken from the aotion of the examiner 
refusing to register the words "Medioal Lalce Salt" as a trade-mark 
for medicinal powders produced hy evaporation from natural mineral 
waters. 

It appears that the said trade-mark was refused regis- 
tration on the ground that the decision against the Middaugh Medi- 
cal Lake Company, from virhom the applicant derives his title, in 
the interference proceeding entitled "Lliddaugh Medical Lake Company 
V. Medical Lake Mineral Y/ater Co.," relating to the trade-mark con 
sisting of the words "Medical Lake" as applied to mineral waters, 
was sufficient to preclude the applicant so far as the present 
application is concerned. 

It is contended on "behalf of applicant that the examiner 
was in error in rejecting said application, for the reason that 
the application of the Middaugh Medical Lake Companjjfinvolvcd in 



ioo 



1 






W. Hall, Sheet -2- 
said interference was for one trade-mark, to wit: "Lledical Lalie," 
and this application is for another and entirely different trade- 
marli, to wit: "Medical Lalce Salt." 

On Augiist 14,1890, it ap::ears that judgment of priority 
on the record in the above entitled interference was rendered in 
favor of the Medical Laice Jlineral Compsiny, and that no appeal has 
been taken from said jucJgnient. It further appears that on ITovem- 
"ber 9, 1891, a petition was filed in hehalf of Wendell Hall, the 
successor to the Middaugh Medical Lake Company, to reopen the said 
interference, in order that applicant nay move to dissolve the 
same on the ground that no interference did in fact exist. 

It is clear that until the judgment on the question of ' 
priority rendered in sad interference has been vacated that the 
applicant is bound by the decision in that interference, for the 
reason that the trade-mark which he now seeks to have registered 
is not substantially different from that which the Middaugh Medi- 
cal Lake Company sought to register in the application that was in 
interference, as above stated. It follows therefore that the ac- 
tion of the examiner must be affirmed. 



i9>o 

JL- ''9r f^U 




123 



T 



ia4 



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^ 



Ijj 



w A P P L X C. A T 1 K 

A of 

^JLIilERMAKBROTHER^&CO.., 

Decided Nov, 26.1890 . 

Recorded Vol. 44^ Page 448 . 

oOo 

MITCriELL, C0I££ISSI01IER: 

The ap::licants seek to register the Yrords "The Karris 
Wire BucXle" as a trade-marl: for suspenders. The office refuses 
registration upon the ground that a patent has been granted to one 
C. R. Harris for wire suspender buclcles, dated Nov. 5, 1839, and 
that there are other patents to the same inventor for similar ar- 
ticles. 

Assuming that the same rale applies when the name of a 
patented article is employed as a trade-mark for another article 
which prevails when the name of a patented article is used as a 
trade-marX for itself, there is still a question of fact to be de- 
termined upon which sufficient evidence is not before me to enable 
a decision to be satisfactorily reached. 

The examiner states that it is the purpose of the words 
"The Harris Wire Bucicle" to advertise to the public that the buck- 
le invented by Harris and protected by patent is used upon appli- 
cant ' s mer chandi se . 



12.4 



Silvermaiin Bros., Sheet -2- 

Silvermami Brotlaers & Co. insist that the words "The 
Harris Wire BuoXle" indicate to the trade not that the buckles 
were patented by Mr. Harris, but that they were made by Silvermann 
Brothers & Co., and that the long association of the words "Harris 
Wire Buclcle" with the wares of Silvermann Brothers &. Co. indicate 
to the trade- the source of manufacture. 

It is evident from the foregoing that a quest ioi^ of fact 

arises in the case and until that question of fact is settled no 

progress can be made in determining the question of the right of 

applicants to the registration. The application is therefore re- 
examiner 

manded to the primary, to give the applicants an opportunity to 

A 

show, if they can, that the alleged trade-Biarfe is associated in the 
trade with suspenders raanufacted by the applicants and not with 
patents of Mr. Harris. If it is associated with the wares of the 
applicants and point to origin and ownership rather than to par- 
ticular patents and patented features, I thinly the objection of 
the examiner should not prevail. 

The application is remanded for further proceedings In 
accordance herewith. 



LAT.ER DEC.iSI.^K:. 
Decided Oct. 10,1891. 



Recorded Vol. 48, Page 228 . 



12.4 




-L/W'9 



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26 



■'.»|EW, 



I 



/3 



Silverciann Brothers & Co., Sheet - 



o— 



SIMOHDS, COivE/IISSIOlIER: 

This is an appeal from the action of the primary examin- 
er rejecting an application for the registration of a trade-mark. 
The appeal has been heard "by my predecessor, and- 

••renanded to the primary examiner to give the applicants an 
opportunity to show, if they can, that the alleged trade-marlc 
is associated in the trade with suspenders manufactured by 
the applicants and not T/ith patents of I-Ir. Harris." 

My predecessor saying: 

"If it be associated with the wares of the applicants and 
point to origin and ownership rather than to particular pat- 
ents or patented features, I think the objection of the ex- 
aminer should not prevail." 

This practically leaves me to decide only whether the 
evidence adduced by applicants support their contention that the 
marK is associated in the trade with wares made by the applicants 
rather than 'vvith certain patents. I find that the evidence ad- 
duced does support that contention, and, thereofre, without pass- 
ing on the main question in the case - regarding that as decided 
by ray. predecessor - the decision of the examiner is overruled. 



26 



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127 



'r: 



!28 



^^ A P Z L i C. A T. 1 0. N 

-^ Of 

E . H. T A Y L 0. R J R. ^ ^ 0. HI, 

Decided Pot. 51. 1891. 

Reoorded Vol. 48, Pap:6 548 . 

oOo 

FROTHIITGHAM, ASSISTAITT COLH.HSSIOITER: 

This is a petition taken from the action of the examiner 
refusing to allow the rcgistrcion of a certain trade-Eiark as here- 
inafter set forth. 

The grounds of the petition are- 

"that the examiner erred in refusing to sanction the registra- 
tion of the said trade-narlc, bGcaiise the vrord 'Taylor', which 
has heretofore been registered, is n(S)t the same in sulDstance 
as a trade-mark for whislcey, as the arbitrary words 'Old Tay- 
lor.' The words 'Old Taylor,' can readily he distinguished 
from the word 'Taylor^' and have been adopted therefore, and 
have become at common-lav; a trade-mark long owned and used 
by the petitioners," 

The question raised for consideration is, T/hether the 
trade-marlc sought to be registered is so similar to any mark al- 
ready registered upon the same class of articl-es as to be calculat- 
ed to deceive purchasers using ordinary caution, (L'cLean v. Flem- 
ing, 96 U. S., 245. ) 

Upon examination of the application it appears that the 






128 



f 



■4 c-i.. 



E.H.Taylor Jr., €z Sens, Sheet -2- 
essential feature which the applicants desire to register as a 
trade-raarlc is the words "Old Taylor," and the class of raerchandise 
to v/hich the mark is declared to "be appropriated is whiskey. 

The essential feature of the registered trade-mark cited 
as a reference by the examiner is the word "Taylor", the class of 
merchandise to which said mark is appropriated being also whiskey. 
While it is true that the mark sought to bo registered differs on- 
ly from that already registered in the use of the word "old" be- 
fore the word "Taylor", yet I am of the opinion that the word "Tay- 
lor" is the distinguishing and the most noticeable characteristic 
of not only the registered trade-mark, but also of that sought to 
be registered, and that therefore the latter v;ould have a tendency 
to deceive and mislead purchasers having ordinary caution. 

It is well settled that the right of registration does 
not extend to trade-marks the use of which woiild infringe pre-ex- 
isting trade-marks. Imitative marks infringe, not only when they 
contain the entire mark previously adopted, but also v/hen they con- 
tain enough of the prominent features of the prior mark to be like 
ly to cause purchasers using ordinary caution to be misled. 

The decision of the examiner denying the registration of 
the trade-mark is affirmed. 



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AZZIilC.AT10.W 
of 



Decided Deo. 9. 10891 . 

Reoorded Vol. 49, Pa^e 54. 

-oOo 

FROTHIITGHAM, ASSISTANT COLILIISSIOTIER: 

This is a petition taken fron the actlOTi of the examiner 
refusing to register the words "Nerve Pood" as a trale-:\ark. 

Applicant alleges: that this mark has been used continu- 
ously in business by him since August 25, 1805 ; that the class of 
merchandise to which said mark is appropriated is "I*Iedicinal and 
Pood Compounds;" and that the particular description of goods com- 
prised in said class on which it is used is a remedy for "nervous 
diseases." 

The record shows that the application was first rejected 
upon three trade-mark registrations, numbered 12,565, 13,711, and 
13,968, in all of v/hich the words "Nerve Pood" are shown, and in 
some of which they are claimed as essential to the mark in connec- 
tion with other matter. The examiner states that he was not wil- 
ling to declare an interference with the said registered trade- 
marks until the applicant had exhibited to him the actual label 



130 






J. Robertson, Sheet -2- 

that he used prior to the year 1885, that is to say, prior to the 

' earliest date of the use set up in the registration first above 

do 
mentioned. The applicant declined to-,this and brought the present 

petition. 

It appears that subsequent to the filing of the said pe- 
tition, the examiner wrote a let :er, of which the following is a 
copy : 

"Before filing his answer to appeal in this case, the 
exajniner calls the attention of applicant to the trade-marlc 
of C. W. Scott, #5,935, registered April 23, '78, in which the 
words 'Nerve Food, ' are used as a descriptive term, and a use 
set up going back to 1875. Unless applicant can overcome the 
additional reference, it seems scarcely worthwhile for him to 
put himself to the trouble of an appeal." 

Notwithstanding such letter, the applicant ha^ ele&ted to continue 
the prosecution of the appeal. It is therefore proper to consid- 
er the new reason for refusing to register said trade-mark as set 
, forth in s-id letter. 

It is well-settled that words in comiuon use, with some 
exceptions, may be adopted, if, at the time of their adoption, 
they were not employed to designate the same or like articles of 
production. (See Cgnal Company v. Clark, 13 Wall., 311, 322). 

Upon examination of the trade-mark of said Scott, above 
referred to, it appears that the words "Nerve Food" v/ere used in 



130 



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rfci 



J. Robertson, Sheet -S- 
thelr descriptive sense. 7/liile it is true that the trade-marlc 
there registered did not odinsists of the vrords "Nerve Pood," but 
consisted of the v;ords "WyomoKe," yet the certificate shows that 
the words "llerve Pood" were used as descriptive of medicine, to 
which the word "7/yoiiioK.e" was appropriated. 

It appears further frora the decision in the case of the 
Moxie Uerve Pood Co. v. Baimibach and others, 32 Ped, Rep., 205, at 
page 207, that as a medicine the words "llerve Pood" had been used 
prior to July 16, 1885, the date of the filing of the application 
of the trade-mark there in suit. 

In view of the fact that the words "Nerve Pood" were in 
eonmion use and were employed to designate a medicine, not only 
prior to the filing of the present application, but also prioT to 
any use set up by the applicant in his application, I am of the 
opinion that the examiner has rightly refused to register said 
trade-mark. The ciase is not unlilce that of Corbin v. Gould, 153 
U. So, 308, wherein it was held that registration conferred no ex- 
clusive right to the use of the word "Tycoon" as applied to tea, 
it appearing that said word had been for many years in general and 
comnon use as a trade-marli descriptive of a class of teas intro- 
duced into the American marlcet- 



-* rfc. 



J. Roljertson, Sheet — 4- 

»a term ^hich all men engaged in the tea business had an equal 
right to use, and v/hich belonged to one individual either as 
a trade-marX or a trade label. It belonged to the public, as 
the eonnaon property of trade, and, therefore, was not subject 
to appropriation by any one person." 

The court applied, in the case last cited, the doctrine aniounced 

in the ease of Canal Co. v. Clark, supra , as follows: 

"He has no right to appropriate a sign or symbol (or a 
name) which, from the nature of the fact it is used to signi- 
fy, others may employ with equal truth, and, therefore, have 
an equal right to employ for the same purpose." 

(See Corbin v. Gould, supra, and cases there cited.) 

furthermore, I am of the opinion that registration should 

have been refused on the ground that the words "Nerve Pood" are in 

themselves descriptive and are not unliSe in this respect the 

words "Cough Candy, ""Cough Remedy, " or "Cough Confection," (See 

Stoughton V. Woodward et al.,39 Ped. Rep., 002), or unlike the 

words "Headache Capsules," ex parte Lichty, 46 MS. I).,422. All 

the words last above quoted were held to be merely descriptive and 

therefore not proper subject for a trade-mark registration. 

In view of v/hat has be n said above, it is not necessary 

to consider particularly the three references upon which the first 

rejection by the examiner was based. Neither is it necessary to 

consider further the action of the examiner calling upon the ap- 



I 






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133 



134 



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V 

( 



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J. Rolaertson, Sheet -5- 
plioant to furnish a label as above set forth, in view of the case 
as above taken. 

The decision of the examiner refusing to register said 
words as a trade-marlc is affinned. 



i 




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APPL1C.AT10K: 
U EMPIRE MI.LIiC.^MPAN Y,_ 

Decided Dec, 24. 1891. 

R ecorded Vol. 49. Page 113 . 

oOo 

FROTI-nilGIIAM, ASSISTANT COLEilSSIOlIER: 

This is a petitiontak.en from the action of the examiner 
refusing to register as a trde-marl: for flour the words "7/hite 
Lily." Registration was refused on reference to the mark of Heis- 
senbuttel & Weise, #2,030, Oct. 20, 1874, which i£ for the : Iden- 
tical subject-mat^ er claimed by the applicant. 

The ground of the petition is, that the examiner erred 
in citing the above reference, because the said trade-marjfc - 

"was not a registered or known trade-mark ovmed by another, 
because the proceedings under which such registration was 
granted were not sanctioned by law, the la\=r being subsequent- 
ly declared unconstitutional andvodi." 

Section 5 of the Act of Liarch 3, 1881, contains the fol- 
lowing language: 

"But no alleged trade-mark shall be registered unless the sam 
appear to be lawfully used as such by the applicant in for- 
eign comivierce or com^rieree with Indian tribes, as above men- 
tioned, or is Y/ithin the province of a treaty, convention, or 
declaration with a foreign power; nor which is merely the 



36 



Empire Mill Co., Sheet -2- 

naine of the applicant; nor which is identical vfith a regis- 
tered or known trade-mark owned by another, and appropriate 
to the same class of merchandise, or v/hich so nearly resem- 
bles some other person's lawful trade-mark as to be likely to 
cause confusion or mistake in the mind of the public, or to 
deceive purchasers. In an application for registration the 
CoiTunissioner of Patents shall decide the presumptive lawful- 
ness of claim to the alleged trade-mark." 

The words "pres-umtive lawfulness of claim to the alleged 
trade-mark" and also the words, "nor which is identical with a 
registered or knov/n trade-mark o\'7ned by another" in the section of 
the statute above referred to are to be particularly noticed. 

In the reference cited the following language appears: 

"This trade-mark we have usSd for six months last past 
as a distinguishing mark for flour manufactured and sola by 
us." 

The application upon which said certificate was granted was duly 

sworn to. 

The question to be decided then is, whether or not ap- 
plicant is the presumptive owner of the mark, in view of wliat is 
disclosed by the records of the office. 

In the case of ex parte Lyon, Dupuy & Co., 28 0. G., 101, 
the identical question raised in the present case was considered 
by thebommisoioner and the examiner affirmed in refusing registra- 
tion of the word "Triumphant" for a trade-mark for flour, where 
the records of the office showed that the same trade-mark had been 



136 



137 



L3S 



_ ?^mS;l^. 



;x 



Empire Mill Co., Sheet -5- 
used "by another party and registered in the office tinder the Aot 
of 1870. 

If it appeared that Heissenbuttel & V/eise had a'bandoned 
the mark, a different case might be presented; but this fact does 
not appear and it is not to be presimed. Although the firm of 
Heissenbuttel & V^eise may be out of existence, it is not improba- 
ble that others may have succeeded to their business and be the 
owners of tlie raarlc. It is further to be noticed that the fact 
than an applicant is the first to use a marX in foreign commerce 
does not entitle him to register it, if it appears that he is not 
presumptively the owner of the mark at common law. (See Manitowoc 
Manufacturing Compariy v. Diclcerman, 57 0. G., 1721.) 

It must be held under all the facts of the case that ap- 
plicant has not established a "prestnative lawfulness of claim, to 
the alleged trade-mark." 

The decision of the examiner is affinued. 



I 



138 



l39 



fl 



APPLiC.AT.10. II. ^/ 

Of ^^ 

C.. G. HAilILI.lIE & C.jO., 

Decided Pel^. 5, 1893 . fS'H 5 i' /^' ^' "V 

Recorded Vol. 49. Page 287. 

i oOd 

siMOiTDS, coivEH SSI oner: 

TJiis is an appeal fron the decision of the primary exam- 
iner denying registry to a label on the ground that the same is 
not entitled to registry in vieT/ of the decision of the United 
States Supreme Court in Hig::ins v. Keuffel, 140 U. S.,, 428; 

The label presented for registration is composed of 

printed matter arrangr;d in three panels, the central one of which 

is as follows: 

"California 
Ague 

Cure 
The True Remeoy 
for . 
Fever and Ague 
And all diseases cause:, by raalaria 
Such as Dumb Ague, Chill from 
Bilious Pever, Intermittent and 
Remittent Pevers. 

This remedy is not only a specific for 
all Malarial troubles but is applicable 
to all cases where a genuine first-class 
Tonic is required. 



140 



C. a. Hainline c"c Co., Sheet -2- 

Every bottle is warranted to oure or 
Money refunded. 

Price One Dollar. 
For sale by all Drugsists. 
Manufactured only by 
C. G. Mainline & Co. 
Anderson, Cal." 

At one side of the central panel there is another panel with a bor- 
der of the same kind, although not exactly the sarae in configura- 
tion, as follows: 

"Dumb or Uaslced Ague, 
One of the most obscure of Ilalarious Diseases, shoves itself 
in a variety of disorders, all of which resume the remittent 
or periodic type, such as neuralgia. Gout, Rheumatism, Per- 
iodic Headache, Blindness, Tootliache, Catarrh, Asthma, Pain- 
ful affections of the Stomach, Liver and Spleen, etc., all 
of v;hich are readily removed and often permanently by this 
Remedy." 

Upon the other side of the central panel is a third panel with a 

border the same as trie last referred to, as follows: 

"It is of the first ILIPORTAIICE that Agues and Bilious dis- 
eases bo treated promptly at the appearance of the first symp' 
toms, before congestion of the Liver and Spleen pass into the 
more dangerous complication of chronic Inflamation and Dis- 
organization; all of which can be prevented by the prompt 
use of 

California Ague Cure." 

It \f7ill be observed that all this matter is purely de- 
scriptive, and that the border lines have nothing about them pe- 
culiar and distinctive. It is clear from tiie decision of the 



140 



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CCHainline & Co., Sheet -3- 

Suprcne Court Hlggiiis v. Keuffel, taken with the decision in Trade 

Mark Cases, 100 U.S., 82, that the so-called label is a part of 

the copyright law. The Supreme Court in speaking of the Authors' 

and Inventors' clause in the Constitution, upon which the label 

law must rest as a basis, said: 

"It does not have any reference to labels Y/hich simply desig- 
nate or de:=cribe the articles to which they arc-; attached, and 
which have no value separated frora the articles; and no pos- 
sible influence upon science or the useful arts, A label on 
a box of fruit giving its name as 'grapes', even vfith the ad- 
dition of adjectives characterizing their quality as 'blacK', 
or 'white,' ot 'sweet', or indicating the place of their 
grov;th, as Malaga or California, does not come within the ob- 
ject of the clause. The use of such labels upon those arti- 
cles has no connection with the progress of science and the 
useful arts. So a label designating ink in a bottle as 
'black', 'blue,' or 'red,' or 'indelible,' or 'insoluble,' or 
as possessing any other quality, has nothing to do with such 
progress. It cannot, therefore, be held by any reasonable 
argument that the protection of mere labels is v/ithin the 
purpose of the clause in question. To be entitled to a copy- 
right the article must have by itself some value as a compo- 
sition, at least to the extent of serving some purpose other 
than as a mere advertisement or designation of the subject 
to which it is attached." 

The label :7hich applicants present seems to come exactly 

within the commendation expressed by the Supreme Court. 

The decision of the primary examiner is affirmed. 



« 



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. 144 



^5U- SB^- 



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jy^" APPLiC.ATI.^K 

of 

Decided Feb. 25. 1892 . 

Recorded Vol. 49. Pap^e 562 . 

oOo 

FR0THI1IGKAI.I, ASSISTAIIT COI£.U SSI ONER: 

This is a petition taken from the action of the examiner 
refusing to register the words "Liebig's Diarrhoea Cordial" as a 
trade-mark. 

It is stated in the application that the class of mer- 
chandise to which said marX. is appropriated is "Medical Compounds" 
and that the particular descriptiori of goods comprised in such 
class on which it is used is "a cordial used as a remedy for dis- 
eases of the stomach." 

The examiner refused to register the said words on the 
ground that the applicants could have no exclusive right to the 
use of the name "Liebig" upon an article "so similar in its pur- 
poses as that produced by the Liebig Meat Extract Co., of London." 

It is v;ell Icnown that the name of'Liebig" is that of one 
of the most distinguished diemists of the present century, and 
that it is particularly^ associated with the chemistiry of food, and 



144 



T 1 



Plnlay & Brunswig, Sheet -2- 
chemistry in its application to physiology. It is also well-known 
through its association isrith the extract of boef prepared from his 
fonnula and \videly Icnown under his name. 

It is clear that a trade-mark such as applicants desire 
to have registered would naturally lead the purchaser to suppose 
that he was purchasing an article, if not manufactured by Liebig 
was prepared after his formula, or at least had his sanction or 
endorsement. No showing is made that a purchaser would not be 
thus misled. 

I an of the opinion that a trade-marlv such as applicants I 
desire to have registered is, irrespective of intent, in the nature/ 
of a false representation; for it is calculated to induce the pub- 
lic to purchase and deal with the article put forth by applicants 
under the belief that it is an article of manufacture of another, 
and that other a famous and renowned chemist. 

It is held that a trade-mark is unlawful and entitled to 
no protection in the courts when it is false as to place of manu- 
facture, and that such, a representation is a fraud, not upon some 
rival manufacturer, possessing a similar trade-mark or label, but 
upon the public. (See Ivlarihattan Medicine Company v. Wood, et al., 
108 U. S., 218.) The same principle but in different forms has 



144 



145 



146 



▼ 



*S<r 



^m 



Finlay & Bnmswig, Sheet -5- 
"been applied to numerous trade-mark oases. (See ex parte Chic- 
chester Chemical Company, 52 0. G., 1061). 

Furthermore, it is well settled that no person can ac- 
quire by adoption such an interest in the name of another person 
as to prevent that person from using his own name in a fair and 
honest manner in the ordinary course of business, and that to jus- 
tify the use by a person of any man's name as against the man who 
bears the name some contract relation or estoppel must be found 
to exist, operating to deprive the latter of what would otherwise 
be his right, which contract relation or estoppel does not exist 
in the present case. (See Rogers & Bro. v. C. Rogers & Bros., A- 
merican Trade-Mark Cases, p. 999; Skinner et al. v. Oakes et al., 
ib . 459; Richmond v. The Dr. S. A. Riclimond Nervine Co., 52 O.G., 
307). 

The present case is to be carefully distinguished from 

that class of cases wherein the name of a distinguished person is 

used in a fanciful and arbitrary sense to designate origin and 

ownership of the article to which it is applied, e.g. "Henry Clay" 

for cigars. 

In view of the case as abo/e taken, it follov/s that the 

applicants have not established a "presumptive lawfulness" of 

claim to the alleged trade-mark. 

The decision of the examiner is affirmed. 



[• I4F, 



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^ t 

O A P P L 1 G. A T 1 0. H. 

Of 

C.HARLES A. B^GARDUS, 

Decided Maroh 2C.1802 . 

Reoprded Vol . 50, Pa^e 3» 

oOo 

T-ROTHIilGK/iM, ASSISTAITT COLn/IISGICKER: 

This is an appeal taken froia the decision of the examin- 
er refusing to register ^ a trade-niarK for "vegetaTDlo soap" as ^ 
hereinafter stated. 

The question in this case is whether the trade-mark 
sought to bo registered is so similar to any marlc already register- 
ed for use upon the same class of articles as to he calculated to 
deceive purchasers using ordinary caution. (See HcLean v. Fleming 
96 U.S., 245; ex parte Coon, 58 0. G., 946). 

The class of merchandise to which the alleged trade-mark 
is declared to be a;ppropriated is "soaps" and the particular de- 
scription of the goods comprised in said class upon which it is 
used is "vegetable sopps, for medicinal purposes." 

The essential feature of applicant's mark is declared to 
consist in the"word Yucca arranged over a representation of the 
Yucca plant. " 



-4 /S C") 



I 



T 



C. A. Bogardus, Sheet -2- 

It appears that the Yucca plant is the same as the Span- 
ish bayonet -pi ant. 

The registered trade-mark cited by the examiner as a 

reference is that of the Mexican Araole Soap Company, of Peoria, 

Illinois, numbered 15,776, registered August 14, 1888, for "Soaps" 

The essential feature of the marX of the reference is stated to 

be - 

"a representation in elevation of a Spanish bayonet-plant 
with the earth removed in front of the vertical plane passing 
through the plant's axis, exposing several unequal potato- 
lii^e tubers of verying size attached by their ends to the 
plant's base." 

Upon examination of the raark of the application and that 
of the reference cited, I am of the opinion that the distinguish- ' 
ing and most notable feature of each is the representation of the 
Spanish bayonet-plant, and that consequently the use of the mark 
now sought to be registered would have a tendency to deceive and 
mislead purchasers using ordinary caution. 

It is to be observed that the right of registration does 
not extend to trade-marl^s the use of v/hich would infringe pre-ex- 
isting trade-marks. Imitative marks infringe, not only when they/ 
contain the entire mark previously adopted, but also when they 
contain enough of the prominent features of the prior mark to be 



Ji ,: 



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l49 




150 






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C. A. Bogardus, Sheet -S- 
likely to cause purchasers using ordinary caution to "be mislead. 

It is also to be observed that even if there were any 
doubt concerning the similarity of the ti^o marlcs above referred 
to, that such doubt is not to be resolved in favor of the appli- 
cant, but in favor of the registrant. (See e x parte Coon, supra . ) 

The decision of the examiner is affirmed. 




u 



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APPLICATION . 

G.E^RGE B. HURD & C.O.MPANY, a ^ 
Decided April 20.1892 . ^ 

Recorded Vol. 50. Pap:e 120 . 

oOo 

PROTHIlIGIiAI.1, ASSISTANT COLMISSIOIIER: 

This is an appeal taken from, the action of the exajniner 
refusing to register a trade-marlc for "Writing Paper and Envelopes" 
as hereinafter stated. 

The question presented for consideration in this case is 
whether the trade-mark sought to be registered is so similar to 
any mark already registered for use upon the same class of articles 
as to "be calculated to deceive purchasers using ordinary caution. 
(See ex parte Zooxi, 50 0. G., 946; McLean v. Fleming, 96 U.S. ,245) 

The class of merchandise to which the trade-mark is de- 
clared to be appropriated is "fine stationary", and the particular 
description of goods comprised in such class on which it is used 
is "writing paper and envelopes." The essential features of ap- 
plicants' mari is declared to consist in the words "Royal Vellum." 
The registered trade-mark cited by the examiner as a reference is 
that of Marcus T,7ard & Co. of London, etc. numbered 3,922, and reg- 



■f r:o 



1_ 



« 



G. B. Hurd & Co., Sheet -2- 
isterea August 8, 1876, for "T/riting Paper." 

The essential features of the mark of the reference is 
stated to be the -ttords "Royal Irish Linen." 

The exainir.er holds that - 

"the word 'Royal' constitutes the trade-nark in both cases, 
and that Marcus Ward & Go's trade-mark is a complete antici- 
pation of the mark presented by applicant. That the words 
'Irish Linen' in the one case, and 'Vellum' in the other, are 
descriptive names for paper and incapable of exclusive appro- 
priation by any party; 'Irish Linen' paper being as familiar 
to the public as 'Legal Cap.' and 'Vellum' being known to the 
trade as 'a heavy uniform paper, showing no 'grain, 'and 'hav- 
ing a very smooth and fine surface. ' It is used for some of 
the 'finest printing.' " 

The examiner also holds that the case clearly comes with- 
in the Corasiissioner ' s decision in the case of ex parte Coon, 49 
MS. D., 294, to the effect that *hen the thing presented for reg- 
istry is so nearly like some prior trade-mark as to be likely to 
lead to mistake or confusion, the office ought to decline to reg- 
ister. 

Upon the examination of the present application and the 
reference cited, I am unable to agree with the Examiner in holding 
that the v/ord "Royal" constitutes the trade-mark of either the 
reference or the application. The trade-mark of the reference 
does not consist in either the word "Royal" alone or in the words 



i KO 



JJ 




153 



154 







m 



f 



G. B. Ifurd &: Co., Sheet -3- 
"Irish Linen" alone, but in the assooiation of the three words 
"Royal," "Irish" and "Linen." The trade-marls, in the present case 
does not consist of the word "Royal" alone nor of the word "Vel- 
iTffii" alone, "but in the association of the two words "Royal" and 
"Vellum." used in an arbitrary sense. 

While it is true that imitative marlcs infringe, not only 
when theycontaiv- the entire rnarli previously adopted, but also when 
they contain enough of the prominent features of the prior marlc to 
be llK.ely to cause purchasers using ordinary caution to be misled, 
yet in the present case I an of the opinion that enough of the 
prominent features of the registered marS has not been adopted to 
cause purchasers using ordinary caution to believe when buyirig pa- 
per stamped with the words "Royal Velliom" that they were buying 
"Royal Irish Linen" manufactured by Marcus Ward & Co. 

The decision of the examiner is overruled. 



154 



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156 






\ 



U- A ? ? L X C. A T I. _0 IT 

Of " 

Decided :v:ay 2, 1802. 

Recorded Vol. 50, Paf^e 1G8. 

oOo '■ 

PROTHIIIGIiAIJ, ASSISTANT COLC.IISSIOIIER: 

This is a petition taken frora the action of the examiner 
refusing to register the words "Cherry Cocktail" as a trade-marl: 
for "temperance or non-alcoholic beverages." The particular de- 
scription of goods upon which the said mark is to be used is stat- 
ed to be "temperance dririlcs, \7hich contain more or less gas, but 
no whiskey, brandy, gin or alcoholic stimulants." 

The examiner refused registration on the ground that the 
mark is"deceptive, " the examiner stating that - 

"the T/ord 'cocktail' always means a beverage containing alco- 
hol^and api:licant cannot secure an exclusive right to it for 
a beverage containing no alcohol." 

In other words, the examiner holds that the said words when applied 
to a non-alcoholic beverage is in the nature of a misrepresenta- 
tion or a fraud, not upov. some rival manufacturer, possessing a 
similar trade-mark, but upon the public. So far as I have been 
able to ascertain, the word "cocktail" denotes a drink, the prin- 



156 



fc SSi_ 



« 



J. C. Bowe, Sheet -2- 
cipal ingredient of which is an alcoholic liquor. 

The applicant cited the following cases to sustain the 
proposition that he is entitled to register the above mark: Ex 
parte Manitou Mineral Water Co., 44 LIS. D.,231; Stoughton v. Wood- 
ward, et al.,39 Ped. Rep., 902; Selchow v. Balcer, 03 N. Y.,59. 

I am of the opinion that the case last above cited is 
not similar to the present case. In that case, the question of 
deceiving the public did not arise. Tleither do the other two cases 
above cited have ai"^ analogy to the present application. The 
marks in suit in these cases were arbitrary and fanciful^ and there 
was no question as to anybody being misled by thoir use. In the 
present case, however, it is apparent that a great majority of the 
public would be deceived by the use of the mark now sought to be 
registered upon beverages that wore non-alcoholic, notwithstanding 
the fact that it may be true there is no such beverage known as a 
Cherry Cocktail. 

The question raised in the present case is not different 
in principle from that raised in the case of the lianhattan Medi- 
cine Co. V. Wood, 108 U. S.,210, in which case it ?;as hold that a 
court of equity will extend no aid to sustain a claim to a trade- 
mark of an article whicli is put forth with a misrepresentation to 



156 



LSt 



157' 




■ ^^SMUff' ■^-- . WJ 



158 



J 



J.C.Bowe, Sheet -5- 
the public as to tho manufacturer of the article, and as to the 

\ 

place v.'here it is raanufactured. So, m the present case, it is ■. 
held that the office will not grant the registration of a mark \ 
which is liable to deceive the public with reference to the con- 
tents of the bottles, boxes, etc. to v/hich it is applied, ITo 
showing is made that the ptiiblic v;ould not thus be misled. 

The following cases were decided upon the principle here 
in announced: Ex parte Chidester Chemical Co., 52 O.G., 1061; ex 
parte Finlay & Brunsv^'ig, 49 IIS. D., 3G2. 

]?urthermore, as a matter of public policy, I do not 
thiiik that registration of the mark in question should be granted. 
Even supposing that it mav be doubtful T/hether or not the public 
would be thus deceived, I aia of the opinion that such doubt should « ' 
be resolved against the applicant, it being held that a doubtful 
trade-marh is bad. Moreover, it must not be overlooked that in 
selecting a trade-mark a person has the right and opportunity to 
adopt out of the many marks that may suggest themselves to him 
such a trade-mark as may not tend in the slightest degree to mis- 
lead. 

The decision of the; examiner is af/inued. ., 

X 



.58 



59 





I lb 



u 









I 




I APPLICATION 

THE COroH^TRY LIACHIHIST COIvIPAUY. LIMITED . ^ 
Deoldod May 15. 1892 . ' 

Recorded. Vol. 50. Pap;e 218. 

oOo 

FROTHINGFJUvI, ASSISTAIIT COLQIISSIOIIER: 

This is ill substance a request Tor the return of the 
amount of the fee previously paid "by Alidi S. Hill on the above 
mentioned application for the registration of a tracle-marS. which 
was refused registration on the ground that said Hill was not the 
exclusive ovmer of said mark. 

It appears that subsequently to said rrefusal of the of- 
fice to register said inarR, "The Coventry Machinist Company, Limit- 
ed, " filed an application for the same mark and has paid the usual 
fee in such cases. It further appears that a certificate of reg- 
istration for said mark has been granted to said company. It is 
stated in the petition that Hill "was and is the agent and repre- 
sentative in the United States" of said Company. 

It is contended on behalf of the petition that the fee 
above referred to should be returned on the ground that the same 
was paid by mistlike, as set forth in the following words:- 



160 



Coventry Machinist Co., Sheet -2- 

"There was, ai-parently, an innocent error in filing the 
original ap.plicaticn to register this mark, in that the agent 
instead of the Principal signed the paper, the former suppos- 
ing that he was the proper person to sign for registration in 
the United Gtates.*' 

It is contended in support of tlie petition that to re- 
fills to return the fee paid "by Hill on his application as request- 
ed would be to take advantage of a technical error, in that it 
would he requiring a second fee to he paid for registcriiig a sin- 
gle trade-marlc to practically the same parties, and in advance of 
any action implying that trie mark would he registered. To this it 
is stated in reply, that the mistake, if any, is a mistake of law 
and not one of fact, consisting of the agent thinking that he had 
the right to apply for and register the mark ?/hen in fact his prin* 
cipal was the proper person to apply for and register such mark. 

While it may "be true that no examination of the appli- 
cation filed "by Hill has been made with reference to prior regis- 
tration, yet it is clear that the action of the examiner in refus- 
ing him registration was an action on the merits, in that he held 
that Hill was not entitled to register the mark, because he was 
not the owner of it as against the world. 

To allow the fee paid by Hill to be returned as request- 
ed would simply lead to endless confusion in cases which are hot 
different in principle frora the present case. 

The petition is denied. 

y 



160 



f 



162 



T 



I 



n. 



^) A P P L I C. A T I. £ H. 

U Of 

BEAVER mah;upac.tijring ^0.., 
Deoided June G. 1892 . 

Recorded Vol. 50. Pa^e 295 . 

oOo- 

FROTHIlIGHAIi, ASSISTAITT COLDnSSIGIIER: 

This is a petition taken from the refusal of the examin- 
er to register a certain trade-srarK as hereinafter set forth. 

Applicants state that the essential feature of their 
trade-mark is "the pictorial representation of a beaver." 
They further state that - 

"The class of nerchandise to which this trade-inark is 
appropriated is paint and roofing composition and the manu- 
factures thereof; and the particular description of goods com- 
prised in such class on which it is used is that of mixed 
paints and roofing composition." 

The examiner refused to register said mark in view of 
the certificate of registration, #2,147, dated Dec. 29, 1074, and 
granted to A. H. Soden. 

The registrant states that the essential feature of his 
trade-mark is "the figure of a beaver," He further states as fol- 
lows: 

"This trade-mark has just been adopted by me; and the 
particular goods upon which it is used are roofing materials. 



h 



62 



m 



Beaver Mfg. Co., Sheet -2- 

and it is printed or staiaped on sheets of paper to "be after- 
ward pasted on rolls of roofing material; and, also, on Icegs, 
casics, barrels or paclvages containing roofing composition or 
materials" . 

It is contended on behalf of applicant that the two 
marlcs are applied to different classes of goods. This, however, 
does not appear to be the fact from an inspection of the applica- 
tion and of the reference. 

The registered trade-mark is applied to "roofing compo- 
sition or materials" and applicants' mark is applied to "mixed 
paints and roofing composition." These two classes of goods are 
held to "be merchandise of substantially the same descriptive 
properties." (See ex parte I^yle & Co., 57 0. G., 274.) 

The only question remaining to be decided is whether or 
not applicants' mark is so near that of the registrant'^ mark as 
would be calculated to deceive purchasers exercising ordinary cau- 
tion. (See ex parte Coon, 58 O.G.,94C; McLean v. Fleming, 96. U.S. 

245.) 

Upon examination of the tvTO marks I am of the opinion 

that applicants' mark is such that purchasers using ordinary cau- 
tion would be likely to 'be misled into buying the article bearing 
it for that of the registrant. 

The decision of the examiner is affirmed. 

X 



162 



MLTmSLfW 



1 



■ 



163 



164 



^^ ■ W 



\-! 



2^ 




of ^ 

J. R. LEE_S£N AND ^ 11 V A 'A_ Y, 

Decidod June 6,1092. 

Reoorded Vol. 50, Pago 295. 

oOo 

FROTKIlIGflAI/i, AESISTAIIT COI.naSSICITER: 

This is a petition requostinG that the goverrjiient fee of ten 

dollars paid Sept. 29, 1879, on the filing of the above entitled 

application for registration of a trade-narh be refunded on the 

ground that it v.-as paid under a mistake. 

It is stated in the petition as follov/s: 

"At that tine (Sept. 29, 1879), there vras no valid lav; under 
which trade-niarhs could he registered in the United states Patent 
Office, and there is no law authorizing the Coriiissioner of Pat- 
ents to receive a fee of ClO. and \?hich seems evident that the fee 
was unlawfully received and held by the Patent Office." 

It appears that the said application was filed under the law 
of 1870, then in force, and at that tine, (Sept. 1879), the Rules 
contained a provision for the division of fees in applications for 
the registration of a trade-marl^. That is to say, on the filing 
of each petition for the registration of a trade-nark, a fee of 
ten dollars was roq;iired, and on registering each trade-mark, fif- 
teen dollars additional was required. 



■W.J .... 



Applicants paid their fee of ten dollars under this provision 
of the Rules, which had the force of law. 

The act of 1870, above referred to, v/as declared unconstitu- 
tional by the Supreme Court of the Unitfid States (Trade-Mark Cases 
100 U.S. 02, ) subsequently to the filing of this application and 
they v;ere notified that the application would not be further con- 
sidered unless, with full knowledge of said decision, they should 
request registration. They were also informed that the fee coxild 
not be refunded \Yithoiat lecislation by Concress. Since the date 
of this notice the case has never been c?.lled up and no action tak 
en on the part of the Office, until the present petition v;as filed 

On March 3, 18S1, the present law relating to the registra- 
tion of trade-marks was enacted. This law provided for further 
registration and fixed the status of cases registered and applied 
for under the law of 1070. It made no provision for the return 
of fees paid on such applications, but merely provided that appli- 
cants should be credited in future ap-plicatlons "for any fee or 
part of a fee" heretofore paid with intent to secure protection 
on the sane marks. Here it is to be observed was an indirect sanc- 
tion of the practice relating to the division of fees above re- 
ferred to. 



164 



-— *. 



m 



Under the state of facts presented in this case, I am of the 
opinion that the pajoaent of the fee of ten dollars in the filing 
of said ax/plication was not a payment made iinder a mistake; that 
the lav/ of 1881 determined vrhat disposition was to he made of the 
fees paid -under the law of 1870, and that the said fee was not irn- 
lawfully received and held by the Patent Office. 

The petition is denied. 



k,> 



'■>, 



I* 



I 

ALL k 1 2. A 11 OE 
of 

THE lOY/A FAEIi^IlIG TOOL COI^IPAI^Y . 
Decided Aur. 4. 1893 . 

Reoordecl Vol, 51, Pap:e 13. 

. oOo 

PROTHIlIGIiAM, ASSISTANT C0I/E,:iGSIONER: 

This is a petition taken from the primary examiner re- 
fusing to register an alleged trade-marS., the essential features 
of which are stated to be "the word 'Crucible' and the representa- 
tion of a crucible used either conjointly or separately." The 
"crucible" is represented ?fith flames issuing from its top. 

The examiner refuses to register ss-id trade-marlc sub-' 
stantially for the reason that it is an attempt to obtain the reg- 
istration of two distinct symbols alleged to be alternative, name- 
ly, the word "Crucible" and the pictorial device associated with 
it, YiThen in fact the two symbols are not, in his opinion, true al- 
ternatives. 

The examiner states in his answer to the petition as 
follows: 

"In the present case the examiner has no doubt about the 
propriety of register irig the word Crucible as a trade-marlc 
for applicant .'s merchandise, nor has he any doubt of the pro- 



1R4 



Iowa Farming Tool Co., Sheet -2- 

priety of registering the pictorial symbol shown, "but a ves- 
sel v/ith flames issuing from the top is not necessarily a 
crucible. Crucibles hav^any forms, of'which the picture 
shown may represent one, but to the Examiner's mind it is 
quite as fair a representation of a foundry ladle as it is of 
a crucible, and therefore is not a true alternative of the 
word. In the judgment of the Examiner the protection sought 
can only be effected by two registrations," 

The examiner does not go so far as to say that he would 
never in any case register trade-marks in what are called "alter- 
nate forms," On the contrary, he states that if a case like the 
"Star Shirt Case," (9 Blatch,,548, ) ?/ere presented to him, in whicih 
case the two symbols were exact alternatives, he would be inclined 
to allow it. He merely holds in the present case that the two sym- 
bols are not true alternatives. I am of the opinion that the po- 
sition taken by the examiner in this respect is correct and that 
it is proper to hold that in order to warrant the registration of 
trade-marks in alternate forms these forms - 

"must be exact alternatives, such that, on sight of the sym- 
bol the word naturally occurs to the mind; such that, to ex- 
press the symbol in language, no other word will occur; such 
that the written or spoken word unfailingly suggests to the 
mind the visible symbol." 

(Erovme on Trade-Marks, 2nd. Ed., Sec. 606.) 

In view of what has been said it is not necessar;^'' to 

consider the question v/hether or not it is ever proper to register 

trade-marks in alternate forms. It would, however, appear to be 



164 



DO 



166 



r^- 



Iowa Pqnaing Tool Co. , Shoot -5- 
the settled practice of the office to register alternate forms, 
when they constitute true alternatives. (See Browne on Trade- 
Marks, 2nd. Ed., 3ec. 60C; ex p arte V/eaver, 10 0. G., l; Morrison 
V. Case, G Blatch., 548; ib.,2 0. G., 544.) 
The petition is denied. 

y 



i 



166 



h 



6' 



16S 



'»;; ' 



T-^ 



t 



APPIilC.AT.I.^H 
of 

£2 EE l»£^IilLlo.Ji, 



Decided Aug. 15, 1892 , 

Recorded Vol> 50^ Pa^^e 25. 
oOo 

PROTHINGIiAIvI, ASSISTANT COLCnSSIOlIER: 

This is an apieal tal^en fron the action of the examiner 
refusing to register the word "Taraarac" as a trade-mark for medi- 
cinal compounds. 

The particular description of goods upon which the above 
marlv is to be used is stated to be "a preparation for throat and 
lung diseases designated as 'Balsam.'" The examiner refused reg- 
istration on the ground that Tamaracic Balsam is a familiar name 
"to the country people in the region where it abounds," and that - 

"Even if the phrase had never been used, applicant could get 
, no monopoly of it as it is absolutely descriptive, and a mere 
variation in spelling canr.ot overcome that objection." 

On July 28, 1891, applicant filed an amendment to the 

application. In this amendment it vias stated that the examiner 

was in error in treating the word which it was sought to register 

as a trade-mark as a descriptive word, that, on the contrary, 

there was nothirxg in the preparat impr composition which had any 



f 



t6S 



m 



I 



J. T. Johnson, Sheet -2- 
relat ion, what ever to the word used. To demonstrate this, all of 
the ingredients of the compotind were enijmerated, namely, "Wliite 
Pine Bark, Balm Gilead Buds, Spilcenerd Root, Cheriy BarK., Epeoac, 
Sanguinaria ITitrate, Morphia Acetate, Ammonia Chloride, Chloro- 
form." It would thus appear that the Balsam contains no Tamaraak,'\ 

I am of the opinion under this state of facts that the 
action of the examiner in refusing to register the said mark is 
correct. It must he held that the word "Tamarac" when applied to 
a so-called "Balsam'', the ingredients of which are as above set 
forth, would he in the nature of a misrepresentation or a fraud, 
not, however, upon some rival manufacturer possessing a similar 
trade-mark, but upon the public. 

The question raised in the present case is not different 
in principle from that raised in the case of the Manhattan Medi- 
cine Company v. Wood, 108 U. S.,218, in which case it was held 
that a court of equity will extend no aid to sustain a claim to a 
trade-marlc for an article which is put forth with a misrepresenta- 
tion to the public as to the manufacturer of the article, and as 
to the place wheie it is manufactured. So, in the present case, 
it is held that the office will not grant the registration of a 
trade-mark \7hlch is liable to deceive the public with reference to 



I 



ifr-- 



m 



69 



170 






'-t^ 

m 



i 



J. T. Johnson, Sheet -3- 
the contents of bottles, boxes, ets., to which it is applied. 
Furthermore, in the present case no shoiTing is made that the pub- 
lic would not be thus misled. 

The following cases have been decided upon the principle 
herein announced: Ex parte Chicester Chemical Company, 52 0. G., 
1062; ex part e Flnlay & Brunswig, 49 MS. D., 362; ex part e Bowe, 
50 MS. D., 168. 

The decision of the examiner is affirmed. 



y 



F 4 '^ 



uro 



171 



T. 



> 



"pyt^rr^^-^ 



U- applic.ati.^k; 

^ of 

NE'ff EIIGLAIID V/HALEBOKE LIAITUirACTURIIIQ COIffAITY . 

Decided Aug. 51. 1G92 . 

Recorded Vol. 51, PaF:e 71 » 

oOo 

FROTHIHGIiAIvI, ASSIGTAKT COLC.il SSI 01 JER: 

This is a petition taken frora the action of the primary 
examiner refusing to register the wori "Premrom"'' as a trade-marR 
for "Y/hale-bone products." 

The Glass of goods to which the said mark is stated to 
be appropriated is "bone products," and the particular description 
of goods comprised in such class upon \Thich it is used is "whale- 
bone products. " 

The exaifliner refused in the following language to regis- 
ter said mark: 

"In the argument filed by the counsel the 27th ult. it 
is stated that 'the goods sold by applicant are not premium 
'goods and it is difficult to conceive in v/hat way said goods 
'would be entitled to a premium' &c. The office is at a loss 
to understand how applicant may be able to secure to him- 
self an exclusive right to the use of his alleged trade-mark, 
as against other dealers in the same goods who having been 
awarded a prize, have a perfect right to so designate their 
goods by using the v/or-^. Premium upon them. By applying the 
mark to certain goods of which it is not descriptive, the term 
becomes deceptive and consequently non-registrable. Browne 



f '^\-J) 



Tlev7 England V/halebone Mfg. Co.,S]ieet -2- 

on Trade-Marlcs, Sec. 71, says: 'A lack of truth, delbars a 
trade-mark from protection. The tale told "by the symbol must 
"be sincere, but when it ceases to be truthful it becomes a 
fraud and is not lawful." 

It is well settled that no one has a right 

"to appropriate a sign, or a symbol (or a name) which, from 
the very nature of the fact which it is used to signify, oth- 
ers may employ with equal truth:, and therefore have an equal 
right to employ for the saiae purpose." 

(See The Amoskeag Manufacturing Co. v. Spear, & Ripley, 2 Standford 

599; Canal Company v. ClarS., 13 ¥all.,31l; Corbin v. Gould, 153 

U. S., 308.) 

I thiiik it may fairly be said that the word"premium" is 
such a word as is comiiionly used by producers in general to express 
a well defined idea or to give information regarding the merchan- 
dise. If this be correct, then it is such a word as oth.ers may 
employ v;ith equal truth, and have an equal right to employ for 
the same purpose, and therefore not registrable. 

Furthermore, the word when applied to merchandise is "^ 
calculated to deceive a purcliaser using ordinary caution by caus- 
ing him to believe that the goods have actually taken a premitim, 
thereby imparting to them the idea of superiority. This is the na 
ture of a fraud, not upon some rival manufacturer, possessirig a 
similar trade-mark or label, but upon the public. 



17'. 



1 



m 



1T3 



\ 



174 






? 



J 



'lif' 



New England TOialebone Mfg. Co., Sheet -5- 

The same principle is found applied to numerous trade- 
marlc cases, e.g. Manhattan Medicine Co. v. Wood, 108 U. S., 218; 
ex parte Chicester Chemical Company, 52 0. G., lOGi; ex parte Fln- 
lay & Brunsvrig, 49 LIS. D., 362; ex parte Bowe, 50 MS. D., 168; ex 
parte Johnson, 51 MS. D., 25. 

Furthermore, no sho;Ting is made that the public would 
not thus Tbe misled. 

Even assuming that it may be doubtful in view of what is 
set forth in the petition v^hether or not the public would be thus 
deceived, I am of the opinion that such doubt should be resolved ' 
against the applicant, it being held that a doubtful trade-marlc 
is bad. (See e x parte Coon, 58 0. G., 946.) 

Moreover it is not to be overloalced that in selecting a 
trade-mark a person has the right and opportunity to adopt out of 
the mapy marks that may suiggest themselves to hiim such a trade- 
mark as may not tend in the slightest degree to mislead. 

The decision of the examiner is afrirmed. 



f 17 



1.T5 



• 



m 



X4 I 



•ae 



• 



1 



m ^ 



APPLI.C.AT.I.O.IT 
Of 
THE RACIl'IE BASINET LumUITACTURIIIG COLIPAIfY . 

Decided Oct. 7. 1892. 

Recorded Vol« 51. Page 194 . 

oOo 

FROTHIITGHAIJ, AS3ISTMIT C0LE.HSSI01IER: 

This is a petition taken from tlie action of the examiner 
in refusing to register an alleged latel, as hereinafter set forth. 

The application states that the label is to be used for 
baskets. The label contains principally the words "Racine Basket" 
placed prominently at the top, and in the central part applicant's 
registered trade-mark. Following this and occupying the lower 
half of the label is certain advertising matter, in different siz- 
ed type, which does not give any information regarding the use of 
the baskets and does not illustrate the baskets in any mani:er. The 
label has an ornamental border and a clouded background. The ex- 
aminer refused to register the said label under the provisions of 
the act of 1874, in vIcy;- of the following decisions; Higgins v. 
Keuffel, 55 O.G., 1139; ex parte 51 dredge & Co., 55 0. G.,1278; ex- 
parte Palmer, 58 0. G., 383. 

In the case of .ex pgirte Palmer, supra, it was held - 



i 7H 



Racine Basket Ufg. Co.,Gheet -2- 

"that a latel in order to be entitled to registry under the 
copyright law in the Patent Office needs to possess just as 
much atristie excellence, and no more, as would entitle it 
to copyright in the office of the Librarian of Congress, if 
it were not something 'designed to be used for any other ar- 
ticles of manufacture* than 'pictorial illustrations or works 
connected with the fine arts.' " 

It is contended on behalf of the applicant that the art- 
istic features on which registration is asked - 

"include the ornamental lettering of the whole label, which 
include seven or eight distinct styles and sizes of handsome 
hand-drawn ornamental letterings, which are original and ar- 
tistic, as much so as a finely engraved bank-not, in addition 
to the ornamental border and artistic shaded or clouded back- 
ground, " 

I ara of the opinion, however, that this label has not 
that degree of art or literary merit which would entitle it to rqg- 
istry under the act above referred to, and that it therefore does 
not fall within that narrov; margin allowed for the registration of 
labels under the copyright law of the Patent Office, which is per- 
mitted by the decision of the Supreme Court in the case of Higgins 
V. Keuf f el . supra . The decision of the primary examiner is 
therefore affirmed. y^ 



■J ■'^' iT* 



177 



78 



t 



i 

J 



\o 

' APPLI.C.ATI.^N 

of 
S.C.HMAC.HT.EHBERG BRO.T.HERS, 

Deolded Oct. 8. 1392. 

Recorded Vol. 51. Par;e 204 , 

oOo 

L. . FROTHIlIGIiAM, ASSISTANT COLC.IISSIOIIER: 

This is a petition taken from the aotion of the exanin- 
er refusing to register an alleged trade-inarK: for cutlery, as here 
; inafter set forth. 

The applicants state in their application as follows: 

"Our trade-marli consists of the representation of an 
eagle with wings spread and standing upon a shield. This is 
generally arranged as sho^n in the accompanying dra^-ing, in 
which the eagle is sho^m with wings spread as if in the act 
I of starting to fly, and standing upon a shield which has upon 

I — one edge the words 'E pluribus unum. ' Held "oeneath one of 

1 the eagle's feet is an olive branch, and beneath the other 

; foot is a bundle of arrows. The olive branch and arrows may 

be omitted if desired without materially altering the charac- 
' ter of our trade-marK, the essential feature of vihich is the 

f representation of an eagle with spread wings standing upon a 

shield." 

, The examiner refused to register the said device, on the 

ground that it was not substantially different from the coat of 

arms of the United States, and therefore not capable of exclusive 

appropriation. It was admitted at the hearing that tl:e marJ: was 



178 



^ 



Schmaohten-Derg Bros., Sheet -2- 
substantially the ooat of arras of the United States, and would "be 
accepted as such by the ordinary inind. 

I an of the opinion that it is against public policy to 
r^ ister the device above described, as well as the coat of arms 
of any state or nation. 

The docisio]! of the examiner is affirmed. 

y 



■ 17^ 




>'^^- 






180 



.^Mj^ 



A££Iii2.ATI.0.1£ 
of 
TIIE J. & P. EALTZ BREYJIITG COLIPAITY . 

Deoided Oct. 3G,1892 . 

Recor de d Vo l. 51, ]- ap;e 246 . 

oOo 

PROTFIIlJGIiAM, ASSISTANT COLHiSIIOlIER: 

This is an ap eal talcen from the action of the primary 
examiner in refusing to register as a label for beer that which 
the applicant states consists of the words and figures as follows: 

"On a buff ground the double headed eagle of Germany at 
top; Trade-IIark (Registered) of one upright barrel back of a 
barrel lying on its side in centre; and at the bottom the 
words 'Kaiser Beer' in ornaraental Roman blaclc print. The ' 
whole surromided by a red border containing the words 'The 
J. & P. Baits Brev/ing Co.' in white blocic type at top, and 
•Philadelphia' in white bloclv type at bottom." 

Y/hilc it may be true that the thing which applicant pre- 
sents for registry as a label may be artistic, yet it is clear 
that it is merely fanciful and arbitrary,''. It is not descriptive 
of the contents of the package to which it is to be applied. It 
follows, therefore, that the label sought to be registered does 
not come within that narrow margin allowed for the registry of la- 
bels, tinder the copyriglit law, in the Patent Office. (See .ex par- 
te Palmer. 50 O.G.,303.) 

The decision of the primary examiner is affirried, 

7- 



J 80 



181 




"W 






> 



?^ 



'^ 



Of 
BRAHD STOVE COIvIPAnY. f LIMITED. ) 



P 




Decided Jan. 19. 1895 . 

Recorded Vol, 52. Pap^e 21. 

— oOo 

SIHOIJDS, C0I.C£ISSI0IIER: 

This is a petition from the refusal of the excjainer of 

trade-marlsLs to register the word "Famous" as a trade-wark for 

Coolcins Stoves, Ranges, and Heating Stoves. The examiner says: 

"The refusal is based on the Examiner's opinion that this 
word is not an arbitrary or fanciful \Tord-s:>aiibol, but an ad- 
vertising epithet such as/person producing merchandise may 
freely use. When employed in connection with any merchan- - 
dise it conveys the idea that such merchandise is actually 
famous, that is, widely known or celebrated, such expressions 
being actually synon;^Tiious with it," 

It would s(;em to be clear that the word "Pamous" is nor- 
mally merely descriptive in its nature, and as such not subject to 
sequestration by any one as a trade-mark. No showing is made 
which gives the word "Famous" in this connection any other than 
its normal meanirig. The petition is denied. 



\ 






^ 



if- 



183 




^■'X 



3mp 



APPLlC.AT.X^ir 
^ of 

7 I.. L. BL^O.D&C.^MPA]iy, 

Decided Teh, 25, 1095 , 

Recorded Vol» 52« Page 154 . 

^ ^^h^ ooo— 

IXSHSR, ASSISTANT COLLIISSIOIIER: 

This is a petition taken from the action of the examiner 
refusing to register an alleged trade-marlc as hereinafter set 
forth. 

The essential feature of said marS. is stated to be 
"Blood & Go's Enamel Finish," The class of merchandise to which 
said marlv is appropriated "is paints and the particular descrip- 
tion of goods comprised in stitch class on v/hich it is used is 

inside 
paints for wood-work in buildings." 

The examiner holds in substance that enamel paints are 
common in the art; that any person has a right to use the phrase 
"Enamel Finish" to designate a "finish coat" of paint, which, on 
being applied, has a suraface resembling enamel; that it cannot 
properly constitute a trade-mark by itself; and that it cannot be 
made to do so by annexing the name of the proprietor to it. 



1S4 



i 



I 



T. L. Blood Sc Co., Sheet -2- 
I am of the opinion that the position taken lay the ex- 
aminer with reference to said inarls:,is cor re ot, and his action re- 
fusing to register the said inar k is therefore affirmed. 

y 



itmmi^smr 



184 



18 



V jl 



IT -'*" 



JS« 



1 



of 
E. HSIT2EBERG PACKIIIG & PROVISION CO ., 

Decided March 2, 1893. 



Recorded Vol. 52, Page 156. 



-oOo- 



FROTHINGPIAM, ASSISTANT COmriSSIOliTER: 

The within is a petition taKen from the action of the 
primary examiner refusing to register ai alleged trade-inarli, the 
essential features of which are stated to be, "the word 'Woodcock' 
and the representation of the tird known as the woodcock substan- 
tially as shown, either of which may "be used alone or the tv/o may 
■be used together." 

This case is not different in' principle from that of . 
Adam Roth Grocery Company, decided adversely to the applicant oh 
March 1, 1893, 

The decision of the primarj*- examiner refusing to regis- 
ter the said mark as a trade-mark is therefore affirmed. 

X" 



-fQq 



1 

n 



■^ 



mMit^ "-■-'■ytn 



;3 



APPLiC.AT.I.^IT 
Of 

Q. k IE 1 Q.M. E 1 R S. ^ k 2 in ^ u F A ;e Y, 



Deolded April 10,1895 . 

Recorded Vol. 52, Page 255 . 
PRCTHIUGILeUI, ACT ma' COinJISSICIIER: 

This is a petition taken fron the action of the examiner 
refusing to register a trade-mark for wire netting and wire cloth 
consisting of the words "Silver Finish." The examiner refused to 
register the said words on the ground that they were, in his opin- 
ion, descriptive of the article, or if not descriptive, were decep- 
tive and that therefore in either case they were not entitled to 
registration. 

I am of the opinion that the words are descriptive and 
that applicant has no right to the exclusive use of such words 
which any other person has the right to use to describe his pro- 
duct, 

A person "has no right to appropriate a sign or a symbol 
(or a name) which, from the nature of the fact it is used to 
signify, others may employ with equal truth and, therefore, 
have an equal right to employ for the same purpose." 

See Corbin v, Gould, 153 U. S., 308, and cases therein cited. 
The decision of the examiner is affirmed. 



^6 






i 



L 



1 



«T 



18& 



^^f 



t 



u 



APPLiC.ATiO.1T 
Of 
.SPAWOGLE a YEAGER, 

Decided April ^4.1895 . 

Enflorsed on Examiner's Answer. 



■oOo- 



SIMOITDS, com::Iissigiier: 

Petition is taken from the examiner's refusal to regis- 
ter the word "Progresso" or "Pros^reso" as a trade-inarlc for flour. 
The objeotion has "been based upsn trade-mari: 7^,318, Sept, 24, 1878, 
consisting of the phrase "Age of Progress" in which "Progress" is 
displayed in a conspicuous diametrical line on the head of the 
barrel and the words "Age i§" -^in small er and Inconspicuous char- 
acters. The examiner's opinion is that the alleged traae-marli of 
applicant so closely resembles that cited, as to be calculated to 
deceive, more particularly when used in a foreign countiy. Appli- 
cant alleges in his oath the use of his trade-marS. in comirierce 
with Cuba and Brazil in either of which the confusioii would be 
lil:ely to occur between it and that of trale-marS. #G,618. The 
realm of trade-iuarlj matter and of fancy names is so wide that no 
reason can be discovered why one manufacturer should select a 
trade-marX for his merchandise which closely resembles that of an- 
other for the same merchandise. In order to establish infringe- 
ment it is^necessajry that there should be exact Imitation, "It is 
sufficient that the imitation be so close as to deceive the incau- 
tious and unwary." McCann v, Anthony; Price & Stewart, 16G. 

Recognizing the fact that a trade-marR. for flour does 
not appear on the barrel or saclc in the Isolated form in which it 
is shown in the application, but always as an element in a complex 
label like that used in a trade-mark cited, it would be observed 
that the simulation in use WLlll be much closer than appears from 
the fac simile before the office. The Examiner would regard it a 
very hazardous piece of business to allow the registration asked. 

The decision of the Examiner is affirmed. 



I^S 



^ 



l«o 



f 



1}.}^ 




APPLlC.AT10.ir 
of 
11 1 1 1 A M _K. ^ T £ K E ^, 

Decided June 1. 1805. 

Recorded Vol. 53, Pap;e 568 . 

OOO 

PISIIER, ASSISTANT COLE-IISSICIIER: 

This ia a petition talcen frora tlie decision of the primary 
examiner rofusing to register the word "Splendid" as a trade-mark 
for flour. 

The examiner bases his refusal upon the ground that the 
word for which registration is sought is not arbitrary or fanciful 
as applied to flour, and also on the ground that it is so similar 
to the nark "Esplendido" already registered for use upon the same 
class of merchandise as to be calculated to deceive purchasers 
using ordinary caution, 

HThile it is true, as contended by applicant, that the 
word "Splendid" as applied to flour is not indicative of a high 
degree of excellence within the strict dictionary meaning of the 
term, yet it is so generally employed to indicate excellence or 
superior quality of al : sorts of articles and comir.odities without 
regard to the correctness of its application that I am unable to 



J 



:ja 



I'i 



of 

THE CELLULOID COMPANY, 



Decided June 29,1895 . 

Recorded Vol. 52, Page 440 . 

oOo 

FISHER, ASSISTANT COinn SSI ONER: 

This is a petition talcen from the action of the examiner 
of trade-marks refusing to register the word "Zylonite" as a trade 
mark, upon the ground that the word has "been - 

"used in a descriptive sense as applied to plastic materials 
composed in part of pyroxyline, as remote as the year 1870; 
also the ofice has knowledge that the word was used "by a 
British Company as long ago as the year '77. Such Toeing the 
case, applicant could not hace coined the word and conse- - 
quently is not entitled to a monopoly of its use upon pyrox- 
yline compounds. Attention is also called to Spons' Ency- 
clopedia of the Industrial Arts, Manufacturers, (Scc, page 
610, published in the year 1879, which also shows the word to 
have been in common use and public property at that time." 

Applicant's attorney virtually admits that the word "Zy- 
lonite" or "3^1onite" has been in use before the date of. its adop- 
tion by applicant, but he urges in his argument that such use v^as 
"casual or occasional," and if it has become obsolete there is no 
reason why it may not be selected the same as any other meaningless 
vrord. 



o 



■■■HiilH 



irm 



The Celluloid Co., Sheet -2- 

I am of the opinion that the act ion of the examiner in 
refusing to register the trade-marl: upon the grounds set forth in 
his decision v;as correct, hut upon further investigation I discover 
that the word is also found in the Century Dictionary, published 
hy the Century Company of New York, and in Wehster's International 
Dictionary, published hy G. <k C. Merriam & Co., Springfield, Mass. 
1891, and in A Dictionary of the English Language, hy James Stor- 
mouth, published hy Harper &. Brothers, Franklin, Square, Nev/ York, 
1885. It does not ^pear that the use of the word was "casual or 
occasional," or that it has become obsolete. 

The decision of the examiner is affirmed. 



VM 



iDi 



J 






APPL1C.A1X0.N 
Of 
^ J^HNPEW&S^N, 

Podded. June 29. 1005 . 

Recorded Vol. 52. Page 445 . 

oOo 

FISHER, ASSISTANT COii.IISSIOlIER: 

Thin is a petition taXen from the action of the examiner 
refusing to register the r/ord "Unrivalled" as a trade-mark for 
preserved fish. 

The exaLiiner's refusal was tased upon the ground that 
this jioTd is not an arbitrary term, but "an ordinary advertising 
term, implying exoelience." It is thought the position of the 
examiner is oorrect, notwithstanding the numerous instances of- 
fered by the applicants in which the terms "Rapid," "Quiclt, » 
"Perfection," and "Fibre-Graphite" were registerc^d. 

The petition is therefore denied. 



If) 






A PP 



193 




394 



f 



r 



m 



^ 



APPLICATION 
Of 

Decided July 10,1895. 

ReoordGd. Vol. 52, Page 461 . 

oOo 

FISIISR, ASSISTANT COmilSSIOl'IER: 

This is a petition taken from the action of the examiner 
of trade-inarlcs, holding that the statement regarding the date of 
the adoption and use of the trade-mark should toe abridged as un- 
necessarily prolix. 

The trade-mark statute requires that the statement shall 
state "the length of tine during which the trade-mark has been use 
used. " '" 

It appears that one J. H. Bonnell was engaged in the 

printing ink business from about February, 1882, to October, 1886, 

name 
under the firm of J. H. Bonnell & Co.; that the firm was then con- 
verted into a limited corporation under the title of J. H. Bonnell 
and Co., Limited; that the said corporation was dissolved July 11, 
1891, and that about October, 1891, this applicant ras incorporat- 
ed with the said J. H. Bonnell as president. It would appear from 
the foregoing that it is uncertain what date applicant might claim 



lOf 



J. H. Bonnell Co., Sheet -2- 
as the date of adoption of this trade-mark. 

Rule 13 of the Rules Concerning the "Protection and Reg- 
istration of trade-iiiarks and labels," states that "Each applicant 
and registrant will l)e held to the date of adoption alleged in the 
statement filed with his application." It might thus become a 
matter i5 importance to the applicant vfhat date was held to be the 
date of adoption of this trade-mark. Under these circumstances 
the statement should be allowed. 

The petition is granted. 

y 



1^)4 



195 



1f)f> 



APPL1C.AT10H; 
Of 

BOVRIL, LIMITE D,_ 
I Decided July 24.1895 . 

Recorded Vol. 55. Pag^e 1 . 

oOo 

Try. 

PISHER, ASSISTAITT COIOISSICTIER: 

This is a petition taS.en from the action of the examiner 
of trade-marks refusing to register as a "print" a small pictorial 
representation of a number of disorderly scliool Tooys who are shown 
as writing on the "blaclc-Tboard and as having written on their 
slates and booi.s certain words setting forth the properties, ingre- 
dients, and wonderful achieyeiaents of Bovril, during the temporary 
absence dkf the teacher from sdiool-iroom. The applicant states 
that the "print "is to "be used for foods, including canr.ed goods 
and cured meats." 

The examiner's refusal to register is based on the ground 
that it - 

"is strictly in accordance with rhat has until recently been 
the setlled practice of the office, and regarded as wise both 
in principle and policy, to wit, that arbitrary and fanciful 
matter affixed to merchandise by. its manufacturer, and serv- 
ing to indicate its origin, is in fact a trade-marK and uust 
be registered, if at all, as such." 



I9f) 



Bovril, Sheet -2- 

The statute under which applicant seelcs protection is 

section 5 of the act approved June 18, 1874, \Thich is as follov;-s: 

"Sec. 3, That in the construction of this act the words 
•engraving, cut, and print' shall "be applied only to pictori- 
al illustrations or works conziected with the fine arts, and 
no prints or labels designed to he used for/other articles of 
manufacture shall be entered under the copyright law, but may 
be registered in the Patent Office. And the Commissioner of 
Patents is hereby charged with the supervision and control of 
the entry or registry of such prints or labels, in conformity 
?7ith the regulations provided by law as to copyrights and 
prints, except that there shall be paid for recording the ti- 
tle of any print or label, not a trade-marlc, six dollars, 
which shall cover the expense of furnishing a copy of the 
record, under the seal of the Coranissioner of Patents, to the 
party entering the same." 

The examiner, wJ:\o is thoroughly familiar with the office 
practice regarding cases filed under the provisions of this stat- 
ute, states that down to the time of the decision of the Coramls- 
sioner in .ex p arte I-Ieinz Company, 62 O.G., 1064, it was the prac- 
tice of the office to construe as synonymous the 7;ords "prints" 
and "labels" in the above act, and to regard those words as mean- 
ing - 

"any device, picture, word or words, figure or figures (not 
a trade-mark) impressed or stamped directly upon the articles 
of manufacture, or upon a slip or piece of paper, or other 
material, to be attached in any manner to manufactured arti- 
cles, or to bottles, boxes, ^nd packages containing them, to 
indicate the contents of the package, the name of the manufac- 
turer or the place of manufacture, the quality of goods, di- 
rections for use, &c. « « 3£ But no such print or label can 
be registered unless it properly belongs to an article of 



f 



196 



^ ' 



197 



*. 



w^ 



^f^" 



i 



Bovril, Sheet -3- 
coinnerce, and be as above defined." 

It becomes pertinent then to inquire into the causes 
that led the Coirnnissioner to change the practice to that outlined 
in ex parte Heinz Co» , supra * The decisions of the courts upon 
cases arising under the statute above quoted are, to say the least 
confusing and inconsistent. The only sure and satisfactory guide 
is found in the Supreme Court decision Kiggins et al. v. Keuffel 
et al.,55 0,G.,1138. In that case the complainant Higgins claimed 
that he was entitled to the exclusive use of a label containing 
the words "Water Proof Drawing Inlc; " that the corai-iiissionGr of Pat- 
ents had issued to him a certificate of registration of the label, 
pursuant to the act of Congress of June 10, 1874, and that the de- 
fendants had infringed upon his rights by the use of the label on 
bottles of ink manufactured and sold by them. The court in pass- 
ing upon the validity of complainat ' s label discussed the consti- 
tutionality of said statute, together with the cases cited, and 
established the proposition that if there was any constitutional 
basis for the act of June 18,1874, it was in the clause of the 
Constitution ?/hich declares that - 

"the Congress shall have power to 'promote the progress of 
science and useful arts, by securing for limited times to 
authors and inventors the exclusive right to their respective 
writing and discoveries." 



198 



Bovril, Sheet -4- 

On the other hand it is well settled that the const itu~ 

tional basis for statutes on trade-inarlcs is found in the eighth 

section of the first article of the Constitution; 

"To regulate conmerce with foreign nations and among the 
several States and with the Indian tribes," 

The theory of the office in granting registration to 
labels before the Higgins v. Keuffel decision seems to have been 
that if such registration afforded any protection at all it was by 
virtue of the "oomoierce'' clause of the Constitution, above referr- 
ed to, and iiot of the"authors and inventors" clause, and this the- 
ory, whether right or wrong, led inevitably to the old practice of 
holding that as there was no middle ground between a label and a 
trade-marS:, the word "print" had no meaning different from "label" 

But since the decision in Kiggins v. Keuffel, which es- 
tablished a different principle from the one on whidi the office 
had previously based its actions, to wit: that the statute author- 
izing tlie registration of prints and labels, if constitutional at 
all, was based on the "authors and inventors" clause of the Consti- 
tution, then the reason for construing the tv;o terms "print" and 
"label" as synonymous vanished, for each of these words has a defi- 
nite meaning. A sprint", as defined by Webster, is - 

"A mar^ made by impression, a line, character, figure. 



IDS 



199 



rfOO 



r 



Bovril, Sheet -5- 

or indentation made by pressure; 
&c. , " 

and a'^lalDel" is- 



3€ K a copy or engraving. 



"A narroTT slip of sil!k, paper, or parclTinent applied to any- 
thing denoting its contents," &c., 

and since all such devices, if they possess the merit described 'oy 
the "authors and inventors" clause of the Constitution, if they 
are not trade-marSLs and are designed to "be used for any article of 
manufacture, may be registered in the Patent -Off ice under the stat- 
ute of June 18, 1374, there is now no necessity for construing 
these ■yfords to mean the sarne thing; moreover, in view of the le- 
gal axiom that the words of a statute, if of common use, are to be 
taken in their natural, plain, obvious, and ordinary significance 
and import, these two words should net be construed as meaning the 
same thing. Indeed, I have grave doubts whether the Commisioner 
has any right to refuse registration to anything coming fairly un- 
der the ordinary meaning of these two terms "prints" or "labels," 
until some court of competent jurisdiction shall declare the act 
of June 13, 1874, unconstitutional. 

The ComJ'ais3ioner ' s decision since the Supreme Court's 
decision in Higgins v. Keuffel, supra, have all been in conformity 
with that decision. In ex parte Eldredg,e & Co., 55 O.G., 1278, 



^no 



Bovril, Sheet -C- 
ConnniBsioner Mitciiell held that a label exhibiting no attempt at 
art or literary merit was not registrable. In ex parte Palmer, 
58 0. G., 583, Comraissioner Simonds held that a pictorial repre- 
sentation descriptive of a harcnocic, which representation possessed 
artistic merit and v/as to be attached to the hammock., ^as regis- 
trable as a lebel. Then followed the decision in ex parte Heinz 
Company, supra ;i in which it was held in a pictorial representation 
which possessed artistic merit, even though it was not to be at- 
tached to an article of manufacture, but was intended to be handed 
about as an advertisement, was registrable under the act of 1874 
as a "print." 

It is clear then that the changes introduced in the prac- 
tice by the Commissioner's decision in ex parte El dredge, ex parte 
Palmer, and ex parte Keinz Company, supra ^ necessarily resulted 
from the decision of the Supreme Court in Higgins v. Keuf f el , supra ^ 
and that the conclusion reached in each of those cases is in ac- 
cord with that decision. 

As the issues in the present case are admittedly the 

same as in jgx parte Heinz Company, and as the decision in that 

case was in accord with the Supreme Court decision in Higgins v. 
V. Keuf f el, the action of the Examiner ought to be overrruled. 

The petition is granted. /(■ 



^ftn 



20i 



o 



02 



if 






i 



A p ? L I. ^ A 1 X 0. k; 

/.^ Of 

/^ JAC.O.B ALBERT ^C.HM1DT, 

Deoidod July 24. 1895 . 

Recorded. Vol. 55^ Paf^e 7. 

oOo , 

PISIIER, ASSISTANT CO}£IIS SIC TIER: 

This is a petition talien from the aotion of the examiner 
of trade-marks refusing to register the word "Goliath" as a trade- 
mark for certain tools. The examiner does not object to the 
word "Goliath" as a proper trade-mark for this class of goods, but 
bases his refusal to register on the ground that: 

"Applicant is not entitled to registration by reason of 
exclusive ownership, because he has not shorni it. He is not 
entitled to register it under the treaty, because he has not 
put himself on the same footing as an American citizen by 
sh0T7ing exclusive ownership, and he is entitled to no privi- 
leges on the ground of reciprocity, because he is asking 
something which his government cannot ask of ours as long as 
it denies him registration." 

Kils case is exactly similar to that of the Portland- 
Cement-Pabrik "Germania, " H. Ilanske &: Co.,decid.ed July 24, 1893, 
but in that case the examiner based his refusal to register on an 
entirely different ground from that upo^ which he bases his refus- 
al in the present case. 



?02 



i 



J. A. Gclitriidt, Sheet -2- 

Article XVII of the Convention of June 1, 1872, "between 

the United States and the German Empire, "by virtue of T;7hioh the 

applicant asks registration, is as follows: 

"Art. XVII. ?/ith regard to the marlcs or la"bels of goods 
or of their pacl^ages, and also with regard to patterns and 
narks of manufacture and trade, the citizens of Germany shall 
engoy in the United States of America, and American citizens 
shall enjoy in Germany, the same protection as native citi- 
zens," 

Tills article places Germans and Americans on the same 
footing in the matter of registration of their trade-marks, "but 
Germany will not register marks consisting entirely of words, (see 
German Act for Protection of Trade-Marks, dated November 50,1874,) 
and section 1 of the act of l.Iarch 3, 1801, only provides for the 
registration of a trade-mark by the "owner" thereof. The only 
question to "be determined in this case is, can a German citizen 
o"btain ownership of a trade-mark consisting only of words, in the 
sense required by section 1 of the act of March S, 1881, when the 
German Government will not register such a trade-mark? 

This Goverrjaent does not require of a foreign applicant 
as a condition precedent to registration in this countrj'' that he 
shall first register his trade-mark in his native country, and if 
this applicant in importing his goods into this country has adopt- 
ed and used a particular mark to indicate to those who deal with 



r 



.v'cJ''sy 



^ 



203 




204 



J. A. Sclunidt, Sheet -3- 
him that the article is inanufaGtured and sold "by him, whether his 
native country xrill register that marls: or not would apparently 
have no bearing on the case. Ho one would have the right, on the 
one hand, to deprive him of v;hat advantage he has acquired in this 
country by the use of said mark, or, on the other hand, to deceive 
his customers into purchasing spurious goods, Now, when that is 
the case, that nan has acquired just that "ownership" that is re- 
quired by the section above referred to, and I thinJc that it \Y0uld 
be an unnecessarily limited construction to place on that term to 
liold that because his country does not deem it trise to register 
mere words as trade-marifcs, he canr-Ot obtain such an ownership in 
this country as will entitle hint to registration under the statute 
and treaty above quoted. 

This conclusio-ji is reached notwithstanding the decision 
in ex parte Haggenmacher, 60 0, G., 438; in which it was held that 
since the Austrian Government would not register mere words as a 
trade-mark and it was the duty of this office to be guided by Aus- 
trian law and the applicant had applied for the registration of a 
mark in which the Austrian law explicitly declares he had no prop- 
ertj"- right, the application for registration here must be denied; 
but the present application is made under a flifferent treaty from 



' 201 



1 

■ 



o. 



J. A. Schmidt, Shc^eo -4- 
the Haggemnaclier application. Article II of the treaty betvreen 
the United states and Austria, 2 0. G., 418, specifies as a condi- 
tion precedent to registration that the applicants must deposit 
duplicate copies of their marlis in the Patent Office at Washington 
and in the Chainiber of Coirrmerce and Trade in Vienna and Pesth, and, 
as the applicant had not done this, registration was necessarily 
refused. It will t»e noted that no such condition precedent to 
registration is required by Article XVII of the treaty bet^reen the 
United States and Germany, above quoted. However, the verj'' next 
ease of this character (H. Manske & Co., supra ) that came before 
the Conanissioner who decided ex parte Ilaggenmacher, supra , was 
sent by him to the Attorney General for his opinion, (see Decision 
of the Secretary of the Interior, G3 O.G., 1537,) indicating that 
he either was not satisfied as to the soundness of that decision 
or that he regarded the cases filed under the treaty betY.-een the 
United States and Germany as on a different basis from those filed 
mnder the treaty between the United States and Austria, 

As this right of registration is based entirely upon the 
treaty and statute above referred to and as the case seems to clear- 
ly come under the provisions of said treaty and statute, I do not 

see that the reciprocity considerations should enter therein. 
The petition is granted. 



'0-^. 




^ ^ 



205 



jr 






^^m^m^^ 



507 



•^ 



of 

VERMONT I.IAPLE SUGAR FiAKERS ASSOCIATION , 

Decided July 25,1893. 



Recorded Vol, 52, Page 496. 



-oOo- 



PISHER, ASSISTANT COLEIISSIONER: 

This Is a petition taken from tliere_fusal of the examiner 
to register a certain label. The examiner states that there is a 
formal error in the application as to the legal standing of the 
proprietors of said la^bel, and requests that the case "be remanded 
to him, in order that this defect may "be corrected. 

In trade-marlv and lalsel cases, as in patent cases, the, 
proper practice seems to "be that all matter of form should "be 
settled before the application is finally disposed of upon its 
merits. It is therefore directed that the case be remanded to 
the primary examiner, in order that the alleged formal 'obj"ect ion, 

if it is properly taken, may be removed. 

K 



r 



20 J i 



207 







■^ 



'^ ■ • «*■-;- ^ 



■^ 



1 



A P ? LIGATION 
Of 
METTE & KAME DISTILLING COIvIPANY, 

Decided July 28,1895 . 

Recorded Vol, 55, Page 54. 

oOo 



PISHER, ASSISTAOT C01£:iSSI0HER: 

This is a petition taken from tlie action of the examiner 
of trade-marks refusing to register applicant's device as a laibel, 
on the ground that it has. all the characteristics of a trade-mark, 
and if registered at all must "be as such. 

The title of the label is "American Wild Cherry Bitters" 
and iDesides the title and the name of the manufacturer it has, in 
its central part a representation of an ordinary American shield, 
turned up on its side edge. Back of said shield, and v/ith one 
foot on the upper edge , is an eagle with outspread wings. These 
with other minor features form quite an attractive looking device. 
The applicant contends that the eagle and shield amount to an il- 
lustration of the word "American," and that the laoel shows such 
artistic merit as is required by the copyright law, and is theia- 
fore registrable as a label under the act of June 18, 1874. 

I think it would require an imagination much stronger 



f '^n 



Mette & Kanne Distilling Co. , Sheet -2- 
tlian that of the ordinary observer to connect the word "American" 
in the title of applicant's label with his representation of the 
shield and eagle. 

As to the contention that the device has artistic merit, 
it might be answered that this quality alone would not render it 
registrable as a label under the act of June 18, 1874. A great 
many legal trade-marks have artistic merit of a high order. 

The figures on this device appear to me to be only fan- 
ciful or arbitrary in the connection in which the applicant pro- 
poses to use them, and when it is remembered, as stated by the ap- 
plicant, that the (fe.vice is "intended to be placed on bott:les con- 
device contains all the essentials of a 
trade-mark, and if registrable at all is registrable as such and 
not as a label. The question whether a representation of the arms 
of the United States is or is not registrable as a trade-mark does 
not enter into the consideration of this case. 



tainlng the article- 



" yfhe ' 



The petition is denied. 



Y 



f 20. 



^ 



m 
i 



1^ 



of 

tJETTEE & KAmm DISTILLIHG COJ.IPAHY , 

Decided Aug. 34, 1895 . 

Recorded Vol. 55, Page 128 . 

oOo 

PISHER, ASSISTAIIT COIUJISSIONER: 

This is a petition for rehearing upon the following 
assignments of error. 

"l. Because the Acting CommlsEioner erred in restrict- 
ing his consideration of said appeal to the 'device' used as 
a center-piece for said laloel. 

"2. Because the Acting Coamiissioner erred in not decid- 
ing whether the applicant's lahel is a trade-inark. " 

In connection with the first assignment of error, it may 
"be said that the whole lahel was duly considered and it was decid- 
ed that in view of all the circianstances of the case it ecu. Id not 
be registered as a la^bel, "out if registrable at all v/as registra- 
ble as a trade-marlc* 

As to the second assignment, the question whether or not 
the applicant's label is a trade-mark was not before the Commis- 
sioner and could not, of course, be properly considered. 

The petition for rehearing is denied. 



(^« 



209 



I 



10 



^ 



^ A P P L i C. A X 1 ^ ii 

/ f LEWX^ ZATTBERG. & BROTHER^, 

Deoided Au,g:. 1. 1895 . 

Recorded Vol. 55, Pa^e 49. 
oOq 

FISHER, ASSISTANT COLL .IS SI ONER: 

This is a petition talcen from the action of the examiner 

of trade-marks refuslrig to register the words "The Favorite" as a 

trade-marlc for toilet Tjoxes, the examiner's objection being that 

it is a "qualifying term;" that such terms - 

"do not express anj^ characteristic of the goods to which they 
are affixed, but only constitute a general assertion that 
they are goods particularly favored by purcdiasers,and there- 
fore are rather extravagant terms of advertising thaii actu- 
ally descriptive terms." 

The -^ord "Favorite" has been before registered by these 

applicants as a trade-mark for picture frames, and the words "La 

Favorlta" as a trade-mark for flour. The legality of this last 

trade-mark has been sustained by the Supreme Court of the United 

States in LCenendez v. Holt, 128 U. S., 514. But in that decision, 

the court in speaking of the mark "La Favorita" said: "It did not 

of course, in itself, indicate quality, for it tras merely a fancy 

name and in a foreign language," thereby drarring a clear line of 



lU 




n 



T 



L. Pat berg & Bros., Sheet -2- 
distinotion "between that case and the present one. 

It is well settled that the words and phrases T7hlch have 
been in common use and indicate the character, Icind, quality, and 
composition of the article to which they are affixed cannot be ex- 
clusivGly appropriated by any one. Canal Company v. ClarX, 13 
Y/all., oil; Manufacturing Company'' v. Trainer, 101 U. S., 51; The 
Brown Chemical Company v. Meyer et al., 55 0. G., 287; Corbin v« 
Gould, 133 U. S., 308. 

The United States Smpremeiriiourt, in Lawrence iianufactur- 

ing Company v, Tennessee Manufacturing Company, 55 0. G., 1528, 

quote with approval the following from Canal Company v. Clarlc, 

supra : 

"the owner of an original trade-m.arife has an undoubted right to 
be protected in the exclusive use of all the marks, forms, or 
symbols that were ai-propriated as designating the true origin 
or ownership of the article or fabric to which they are af- 
fixed; but he has no right to the exclusive use of any words, 
letters, figures, or symbols, which have no relation to the 
origin or ownership of the goods, but are only meant to in- 
dicate their names or quality. He has no right to appropri- 
ate a sign or a symbol, which, from the nature of the fact it 
is used to signify, others may employ with equal truth, and 
therefore have an equal right to en^loy for the same purpose" 

The proper test to be applied in a case liifce the present 

one is to ^sk if the applicants have the right to the exclusive 

use of the words for v;hich registration is asked when applied to 



!10 



1 



if J -^K 



¥ '^ I 



S 



ir^ 



L. Pat Lberg Bros., Sheet -S- 

goods of the same character. Browne on Trade-Liarlcs, par. 95. 

The definition given in the Century Dictionary of the 

word "favorite" is - 

"A person or thing regarded with peciiliar favor, lilting, 
or preference; one who or that which is especially liked or 
favored," etc. 

The intention of the applicants in the use of the words 
seems to be to indicate that their goods are the most popular - 
the "favorites" with the public. If any other manufacturer of 
toilet boxes chose to assert that his goods were the favorites of 
purchasers of such articles no one has a right under the trade- 
marlv laws to pre'^ent him from so doing, and in fact his assertion 
may be true while that of the present applicants may not. 

The decision of the examiner is affirmed. 



213 



J 



214 



of 

LIL 1E.E LI: £. ^E RLE 11 L L^ El* 

Deoided Aug. 8, 1895 . 

Recorded Vol. 55, Page 75. 

oOo 

FIGKER, ASSISTANT COIvEilSSIONER: 

This is an appeal t alien from tlae action of the examiner 

of trade-marlcs refusing registration of a trade-mark consisting of 

the word "Phoenix" and the representation of a phoenix, either of 

which used separately and either talien alone will constitute the 

trade -mark. 

The examiner states that - 

"This claim is intended to cover exactly what is called 
an alternative form of trade-mark, and it is for this reason 
that it has "been refused. The increasing number of applica- 
tions of this character, many of v/hich clearly have no claim 
to be considered as alternatives, has led the examiner to 
doubt the expediency and even the legality of granting any 
registrations in this form." 

But I do not see that this question arises in the present case. 

The word "Phoenix" and the representation of a phoenix as shown 

are not true alternatives. The word as defined in the Century 

Dictionary has several distinct meanings, "A genus of palms," "a 

fabulous bird, the phenix," "a kind of grass," and "a person of 



r 



14 



I 



▼ ^ 



Phoenix Candle Co., Sheet -2- 
unique excellence," etc. 

It therefore appears that the word "Phoenix" does not 
"inevitaioly express the same idea" as applicant's picture. (See 
ex parte Adam Roth Company, 62 0. G., 315. ) 

The decision of the examiner refusing registration is 
afirmed. . . 



214 



I 





n 



f^ JL»J 



L 



{ AP?LiC.Ar:iO.II 

of 
.r DIJLIJT.H I.MPERI.AL MILL CO.. 

Deoided May 51. 1095. 

Recorded. Vol. 52. Pap:e 579 . 

oOo 

PISFIER, A33ISTA1IT COI.H.IISSIOIIER: 

This is a petition talcen from the decision of the primary 
examiner refusing to register a representation of a dog as a trade 
marlv for flour. 

The examiner states that his refusal is based upon the 
general principle that - "A general type of objects canv.ot be ex- 
clusively appropriated, " citing the second edition of BroTsne otx 

-A 

Trade-Marks, 1885, Sees. 89X and 588, and the Kamiltcn Disinfec- 
tant Co., Vol. 27, Mo. Dec, 542. 

The case is not materially different in principle from 
what it TiTOuld be if the applicant were seeicing registration of the 
word "dog", and a pictorial representation of a dog as alternativost 

It is stated in the application that "a representation 
of a dog, preferably standirxg erect, as shown" forms the center of 
the trade-mark, and it is i^irther stated that the essential fea- 
ture of the trade-mark is "a representation of a ddfe." It appears 



!16 



I 




Duluth Inperial Mill Co., Sheet -2-- 
from these stateuents that the written arguments filocl in the ease 
that TThile the pictorial representation shown is preferaoly em- 
ployed it is the desire and intent of the applicant to appropriate 
as its trade-mark a representation of a dog generically, ij^e.' f ^^ 
such inarir.er as to cover and include any and all species of the 
genus dog in any and every position that it may be made to assume, 

I In this conr.ection it is proper to consider what the 
court held in Canal Compan;:,'' v. GlarS., 13 Wall,, 311. In this 
ease Mr. Justice Strong said: 

"« « s in all cases where rights to the exclusive use of a 
trade-mark are invaded, it is invariably held that the es- 
sence of the wrong consists in the sale of the goods of one 
manufacturer or vendor as those of another;" « jC s "The 
trade-mark mtist therefoi-e be distinctive in its original 
signification, pointing to the origin of the article, or it 
must have become such by association. And there are two 
rules which are not to be overlooked, llo one can claim pro- 
tection for the exclusive use of a trade-mark or trade-name 
which would practically give him a monopoly in the sale of 
any goods other than those produced or male by himself. If he 
could, the public would be injured rather than protected, for 
competition would be destroyed. ITor can a generic name, or a 
name merely descriptive of an article of trade, of its quali- 
ties, ingredients, or characteristics, be employed as a trade 
mark and the exclusive use of it be entitled to legal pro- 
tection," 

The effect of allowing what is practically a generic 

claim in this case would be, it is thoiigh^ to rather encourage a 

monopoly than to distinguish the goods of applicant from those of 



:3B 



F.si^ 



■f 



Dultittli Imperial Mill Co., Sheet -S- 
other manufacturers. 

It is held to he not properly within the province of 
this office to state either in terms or Toy implication what will 
amount to an infringement of ajn^r trade-mar};.. Applicant may 
properly secure registration of the particular mark sho^OTi l^y it, 
leaving for the determination of the courts the question whether 
or not any other representation e^~a-iiog' than that shown is an 
infringement of such trade-mark. Further than this it is not 
proper for the office to go, (See ex parte Adam Roth Grocery Co., 
62 0. G., 315.) y 

The decision of the examiner is affirmed. 



-S 



V 21 



J 



219 



220 



W 



APPLiC.AT.1^1. 
of 
DULUT.H IMPERIAL Milili ^ 0_. , 

DeQlded Aup:. 15, 1895 . 

Recorded Vol. 55, Page 85 . 

OOO' 

PISKER, ASSIST/aiT COI.EII SSI ONER: 

?his is a petition talien from the action of the examiner 
of trade-marks refusing to enter a proposed amendment. 

This case has been up on petition to the Cominlssioner be- 
fore, the question then being whether applicant had the right to 
registera trade-marl: the essential feature of which xvas "A repre- 
sentation of a dog;'" and in the decision of the Assistant Commis-r 
sioner rendered May 51, 189S, it was held - 

to be not properly within the province of this ofi ice to 
state either in terms or by implication what will amount to 
infringement of any trade-mark. Applicant may properly ae- 
cure registration of the particular mark sh0T?/n by it, leaving 
for th9 determination of the courts the question whether or 
not any other representation of a dog than that shoiyn is an 
infringement of such trade-marls.. Further than this it is not 
proper for the office to go. (See ex p arte Adam Roth Company 
62 0. G.,515. ) 

Applicant now proposes to amend by inserting the v/ord 

"pictorial" before the word "representation", making the essential 

feature of his trade-mark "A pictorial representation of a dog." 



^ 




Duluth Imperial Mill Co., Sheet -2- 
This olearly does not avoid the objection made to the registration 
of this trade-marlv in the decision of May 31, 1893, above quoted. 
In said decision it was held in effect that applicant was not en- 
titled to the registration of a trade-marlc the only essential fea- 
ture of which was "a representation of a dog," but it was left to 
him to register his trade-mark if he restricted the essential fea- 
tures by some proper expression to the representation of a dog, as 
shown. 

The decision of the exaiainer is affirmed. 



I 220 



^91 




OO' > 




I 



y . 

A P ? L X C. A T. 1 ^ IT 

I RO.BERTA. SC.HLEGAL, (^' 

Decided Au^» 16.1895 . 

Recorded Vol. 55. Page 91. 
oOo 

PISHER, ASSISTMT COIC.IISSIOIIER: 

This is all appeal taken from the action of the examiner 
of trade-marks refusing to register as a print certain matter con- 
sisting of a sheet of paper, one side of -prhich contains a number 
of designs of different colors and numbered. The other side of 
the paper is also covered vrith a number of designs all in blue 
tint. Such printed matter appears on each side. The examiner 
refuses to register the alleged print on the ground that it is not 
a print in the sense of the copyright law. 

The statute governing the registration of prints in the 

Patent Office is - 

"Sec. 3. That in the construction of this act the words 
'engraving, cut, and print* shall be applied only to pictori- 
al illustrations or worlcs connected vrith the fine arts, and 
no prints or labels designed to be used for any other arti- 
cles of manufacture shall be entered under the copyright law, 
but may be registered in the Patent Office. And the Commis- 
sioner of Patents is hereby charged with the supervision and 
control of the entry or registry of such prints or labels, in 
conformity with the regulations provided by law as to copy- 
right of prints, except that there shall be paid for re^ord- 



lUtL. 



R— , 



R. A. Schlegel, Sheet -2- 

ing the title of any print or laTsel, not a trade-iuarlc, six 
dollars, which shall oover the expense of furnishing a copy 
of the resord, under the seal of the Coraralssioner of Patents, 
to the party .entering the same." 

The case hinges on what is meant hy this word "print" 

uned in the above statute. In Rosenbaek v, Dryfus, 2 Ped. Rep,, 

21V, it was held that the word "print" means "A picture, soiathing 

complete in itself, similar in kind to an engraving, cut or photoy 

graph," Applicants device is not of the nature of a single en- \ 

i 

graving, cut or photograph. Each of his multicolored designs is | 
complete in itself, there is no blending of colors or parts to 
produce a unitary effect as there is in an engraving, cut or photo 
graph, but each of the different colored designs is entirely in- \ 
dependent of all the rest. They are only placed on a single 
sheet of paper for convenience, I'iuch less do the blue tinted de- 
signs on the other side of the sheet tend to combine with the mul- 
ticolored designs in producing any unitary effect similar to that 
produced by a single engraving, cut or photograph. Each one of 
the numered colored designs might be placed on separate pages of 
a boo^ and each of the blue tinted designs on other pages, and 
they would subserve identically the same purpose as they do in 
their present form. 



»t,Jtm 



n«.- . ' ..uM 



223 



i 



ooi 






T 






R. A. Schlegel, Sheet -3- 
There is another reason why this allegeci print should 
not be registered, since, if registrable at all in the Patent Of- 
fice, it must be made under the statute above quoted. In Kiggins 
et al. V. Keuffel et al., 55 0. G., 1139, it was held that - 

"To be entitled to a copyright the article must have by 
itself some value as a composition, at least to the extent of 
serving some purpose other than as a mere advertisement or 
designation of the subject to w^hlch it is attached," 

As a print is registrable under the same provisions as 
labels it too must have some value as a composition, at least to 
the extent of serving sOme purpose other than as a mere advertise- 
ment . 

In the present case applicant's multifarious designs 
have no use or object other than to assist persons in designating 
the particular liind of glass - gcods they wish to order » They do 
not possess any merit in themselves as works of art, and in ac- 
cordance with the principle laid in Higgins v. Keuffel, supra, it 
is not thought that they should be registered. (See also ex parte 
Eldredge o; Company, 55 0. G., 1278.) 

The decision of the exaiainer is affirmed. 



I 



22^ 



("w/^O 



^w 






■^ 



3. 

/ A P Z i i £ A T. 1 N ^ 

Of 
' LAZARUS, S.C.H1ARZ & LiPP EJR, 

Decided Au^. 25, 1895 « 

Recorded Vol. 55, Pap.e 116 . 

oOo 

PISHER, ASSISTAIIT COLEII SSI ONER: 

This is an appeal taken from the action of the examiiier 

of trade-marlis refusing to register as a trade-mark the ?;ord 

"Crescent" and the representation of a ere scent -shaped figure, on 

the ground that the two forms are not true alternatives. 

In ex parte Paper, 16 0. G., 678, Mr. Coroi-iisGioner Paine 

said, in a case similar to the one under consideration: 

"I dotibt whether the separate use of two such symlDols 
as one trade-marlc can "be reconciled with the statute." 

I am in thorough accord v.'-ith the principle announced in this de- 
cision and shall hold that in order to register alternative forms 
they must be strict alternatives. 

In the case under consideration, it would be just as 
accurate to register the word "lune" as an alternative of appli- 
cant's figure. I^ow if another applicant should apply for the 
registration of the word "lune" as a trade-mark for braids, he 



1^ 



Lazarus, Scln^arz Sc Lipoer, Sheet -2- 
could not be regectcd, even though the present trade-inark had been 
previously registered, but if he shoiild apply for the registration 
of thG word "lune" and the representation of a lune, he isrould be 
rejected, even if the present trade-inarK: had been previously reg- 
istered. Tlie only conclusioii that oan be reached from this state 
of faots would be that by the registration of the word "Crescent" 
and the representation of a crescent, applicant secures a broader 
protection than he would by the registration of the word "Crescent" 
or the representation of -? crescent. This is manifestly against 
the intent of the statute, which only contemplates the registration 
of a single maris, in a single application. And while it is proba- 
bly true that the courts would hold a use of the word "Crescent "to 
be an infringement of the represent at f'on of a crescent, it is held 
that in accordance with the principle announced in the decision 
above cited that these two forms am not such alternatives, as 
should be registered as one trade-mark. 

The decision of the examiner of trade-marks is affirmed. 



,,; ^T» 



of 

Decided Sept. 32,1895 . 

Recorded Vol. 55, Page 192 . 

oOo- 

PISHER, ASSISWTAM! COlvEiIISSIOEER: 

This is a petition to register a label for alcoholic 
liqours, which consists of a colored picture representing a scene 
in the life of Colunibus and the v/ords "Columbus Discovers Land." 

It is o'bvious from &n inspection of the label that it is 
a fanciful device. It does not in any sense describe the object 
to which it is affixed. 

The petition is therefore denied. 

X 



(OS 



229 



i^'^rr^^ 



r'-V ^ *\ d \ 



•i- \!)l 



'S 



|-.J 



1 



^1 




A P P L 1 C. A T I. £ 1 x/r^ ' 

C.O.HNI.NG_& C.^MPA1 Y, l^^ 

Decided Sept> 22, 1395 . 

Recorded Vol. 53. Pap;e 190 . 

^^oOo 

FISHER, ASSISTAirr COiC-IISSICNER: 

This is a petition from the action of the examiner re- 
fusing to register a trade-mark, the essential features of which 
are the words "'Monarch Distilling Co.' enclosed betv;een concen- 
tric circles of ■broken lines and surrounded by a circle of radiat- 
ing scrolls." 

The examiner refused the above trade-mark upon trade-mark 
#13,860, the essential features of the latter being in the title 
"LI, V. I.'Ionarch." Each of these trade-marks is intended to be used 
upon the same merchandise. 

In the examiner's statement it is said:' 

"In the examiner's view the striking and distinguishing 
feature of both is purely the word 'I,Ionarch, ' the merchandise 
in either case being probably known on the market as the 
'Monarch vrniskey.' The limitation of the registration by the 
initials 'M. V. ' is unimportant, and scarcely appeals to the 
ordinary purchaser. The same is true of the nierchandisc nam- 
ed in the claim of the application. The broken lines forming 
the concentric circles simply indicate the use of a stencil. 



230 



Corning & Co., Sheet -2- 

and so are the radiating scrolls which are an ordinary fea- 
ture of stencil worS:. In the examiner's opinion the tvro 
trade-raarlcs so closely resemble each other as to be calculat- 
ed to deceive x x x ." 

I agree with the opinion of the examiner as above ex- 
pressed. 

The petition is denied, ^ 



23: 



•S^a-^«-;)r»- 



^ 



APPLXC.AT.i^N 
of 
J. B. KJ[ ^G & C.^MPA]IY, 

/ Decided ITov. 24,1895 . 

Recorded Vol. 55, Pap;e 500 . 

— bOo-^ 

PISKSR, ASSISTAIIT COLnuISSICIIER: 

This is a petition taken from the action of the examiner 
of trade-marks refusing to register a label. 

The label consists of the name of the firm and their 
place of business, and states that they are the sole manufact^^rers 
of the article to which the label is to be attached, and has in 
its center the representation of a crown or ecclesiastical cap 
surmounted by a globe and three parts of a maltese cross. 

The fancit*ul or arbitrary part of the label has "been ^ 
previously registered as a trade-marlc. 

As authorizing the registration of the present label, 
the applicant seems to rely on that part of the "Amended construc- 
tion of Statutes Relating to the Registration of Prints aiid Labels 
dated Peb. 9, 1893, which states, "A label cannot be registered 
"if it bear a device capable of sequestration as a trade-mark tm- 
"til such device is registered as a trade-mark;" but the sarae "con 



OOo 



J, B, King 8z Co., Sheet -2- 

struotion" from which the al)bve sentence was quoted also states 

that "Both labels and prints in order to be entitled to registry 

"must be intellectual productions in the degree required by the 

"copy-right law." This practice is founded on the Supreme Court 

decision, in the case of Kiggins et al. v. Keuffel et al.,55 0,G., 

11S9, in 77hich it was held- 

"that the clause of the Constitution under which Congress is 
authorized to legislate for the production of authors and in- 
ventors has reference only to such writings and discovei*ies 
as are the result of intellectual labor; that it does not 
have reference to Labels which simply designate or describe 
the article to which they are attached, and which have no val 
ue separated from the ar'ticles and no possible influence upon 
science or the useful arts, and that to be entitled to a copy- 
right the article must have by itself some value as a compos i 
tion, at least as serving some purpose other than as a mere 
designation or advertisement of the subject to which it is 
attached. The doctrine thus laid dorm was applied to Labels 
registered in the Patent Office." See also ex parte Eldredge 
& Co. ,55 O.G., 1278. 

The label in the present case, separated from the arti- 
cle to which it is attached, has no value as a composition and 
should not be registered. 

The decision of the examiner is affirmed. 



234 




^, 



APPLICATION 
^ Of 

I STEPHEN Z» WHI.TMAH: & ^O.H, 

Decided Deo. 25 . 1891. 

Recorded Vol. 40. Papi:e 98 . 

-;E^^SI, ASSISTANT COIH-H: SSI ONER: 
■' This is an appeal' taJicn frori tlio action of the primary . 

examiner refusing" to register the label constituting the subject- 
matter" of the above entitled application. 

The applicants request in their application that the 
title of said label, 

"to v7it: 'VTiitnan's Celebrated Conmoreial Chocolate' may be 
recorded according to the Act of congress relating to patents 
trade-marks and copy-rights, approved June 18th, 1874. " 

The following language also appears in said application: 

"In the said label as illustrated by the copies the title is 
printed upon a slip having an illustration of a mountainous 
sea coast with vessels adjacent and the figure of a woman re- 
clining upon an ornamental roclc-like structure and holding a 
hand mirror." 

Upon examination of said label it is apparent that it 
contains what is known as trade-mark matter, that is to say, sym- 
bols or devices entitled to registration as a trade-mark or trade- 
marks upon supplying the proof required by law. 



^o 



f^.l 



S. p. \fnitnian & Son, Sheet -2- 

Upon examination of the reasons given in support of the 
appeal, it is clear that they amount in substance tc a statement 
that the applicants are entitled to register a laTbel, if they so 
elect, whether or not it contains matter vrhich might be the sub- 
ject of a trade-mark. Y/ith respect to this proposition, it need 
only be said that it is the settled doctrine of the office that 
labels oontainirig or substituting trade-marKs cannot be registered 
as labels iintil the trade-marlc matter has already been registered 
in accordance with the statute regulating the registration of 
trade-marks. (See ex parte Euckstuhl, 56,0.G., 927; ex parte The 
Diamond Laboratory Company, 44 MS. D,, 19; ex parte ColiAmbia Semir- 
ing Machine Company, 41 MS. D., 228; ex parte Snook and Halbe, 40 
MS. D,, 423, and cases cited therein.) 

In the case of ex parte Rucks truhl, supra, decided by the 

present Comanissioner, the following language appears: 

"The law purporting to authorize the registry of labels 
by this Office is contained in section 3 of 'An act to amend 
the law relatiTig to patents, trade-marks and copy-rights, ' 
approved June 18, 1874, and it only applies to 'any print or 
label not a trade-mark. ' It is the settled practice of the 
Office to consider the words 'not a trade-mark' as applying 
to anything appearing on a label susceptible of appropriation 
as a trade-mark and not already registered as such. Ho good 
reason at present aprears for departing from this practice." 

In view of said decisions it is not necessary to con- 



:J i 



(iwOtj 



k 



-, ^m. - . ■!?f-!-/ 



ai^ 



i 



S. F. Whitman 8c Son, Sheet -5- 
sider whether or not it would be possible to register any label 
containing arbitrary or fanciful matter iinder the Act of 1874 re- 
lating to the registration of labels. 

The decision of the examiner refusing to register the 
label is affirmed* 

I ani authorized by the commissioner to state that he 
concurs in the conclusion above i^eached. 



?i^ 



B /Or* --sv 



n 



of 



"< 



Deoidod Feb. 24, 1892 . 

Reoordod Vol. 49, Pa.g:e 560 . 

oOo 

PROTHIIIGHALI, ASSISTANT COLnJISSIOlIER: 

This is a motion for a rehearing of an appeal taken from 
the action of the primary examiner refusing to register an alleged, 
label, the Comziissioner having rendered a decision Dec. 23, 1391, 
on said appeal affirming the action of the examiner. 

The motion is stated to be made "in view of the change 
in the practice of the office as indicated in^the decision in ex- 
T?arte Palmer, 58 0. G., 384." y 

It was held in the case above cited that " a pictorial 
representation descriptive of the fabric of the haminock to which 
the label applies," was proper subject-matter for registration as 
a label. It was not, however, intended to decide in that case, 
nor was it in fact iield therein, that any label, although it con- 
tained arbitrary or fanciful matter, was proper subject-matter for 
registration as a label. Furthermore, the label in the case cited 
consisted of matter not fanciful or arbitrary in the sense of the 






IL 





S. 'F. \7hitman 5: Son, Sheet -2- 
trade-marlc law, but illustrative of the article to Tihich it was to 
be applied, and its use, etc., and having such a degree of artistic 
excellence as to entitle it to protection under the copy-right law 
if it ¥fere not something" designed to be used for any other article 
of manufacture" than "pictorial illustrations or v/orks con::ected 
with the fine arts." 

Upon exaiaination of the label now sought to be register- 
ed it is clear that while that part thereof which contains fanci- 
ful or arbitrary matter within the meaning of the trade-mark law, 
namely, "an il_ustration of a mountainous sea coast v;ith vessels 
adjacent and the figure of a woman reclining upon an ornamental 
rool^-lilic structure and holding a hand mirror," may possess such a 
degree of artistic merit as would entitle it to be registered un- 
der the copyright law, yet it is not a pictorial illustration of 
"chocolate, " and its use, etc. 

In other words it 5irust be held that applicant has pr6~ 
sented for registry that which falls without that narrow margin 
allowed for the registry of labels under the copyright law in the 
Patent Office, which is permitted by the decision in ex parte 
Palmer, supra . and that consequently there is no good ground for 



1 



S. F. Y/hitman, Sheet -5- 
granting a rehearing as requested. 

The motion is denied, 

I ain authorized oy the Connissionor to state that he con 
curs in the conclusion above reached. 



239 



4.U 






m 



of 

_ST_EPHEN F* KE L IE AE ^ £££» 

Decided Dec, 6, 1893 . 

Recorded Vol. 53, Page 365 « 

oOo- 

PISHER, ASSISTAITT C OJiEII SSI ONER' : 

Tills Is a petition requesting "reconsideration of the 
"action of the Commissioner refusing registration of the label 
"presented in the above case." 

Applicants base their request upon "the alteration in 
"the practice of the Patent Office as indicated by the amendment 
"of the Rules regarding Prints and Labels as now published in the 
"Official Gazette." - 

This case was decided on December 23, 1891, and again 
upon rehearing on February 24, 1892, adversely to the applicants 
by the Assistant Commissioner v^ith the concurrence of the Commis- 
sioner. 

I should feel reluctant to reopen this qase, which has 

\ 
evidently had such careful consideration, unless I felt fully con- 
vinced that the decisions referred to T;ere absolutely erroneous* 
As a matter of fact I agree vrith the findings therein made. 
The petition is denied. 



m 



'.v»»jimj.iy ' 



APPLIC.AT.10.li; 
of 

S.I.MO.N C.HRi^TI.AIi^E¥, 

Decided Sec. 9. 1895 . 

Re corded Vol. 55, Pase 508 . 

-oOo 

FISHER, ASSISTANT COLE.:iSSIOIIER: 

This is an appeal taken from, the decision of the examin- 
er refusing to register as a trade-mark for garment-pat Lerns, the 
word "Surefit." The exaiiiiner holds that this word, as applied, 
is descriptive and that, althotigh it may be said that the patterns 
themselves do not fit, it eani:iot be doubted that it is intended 
to convey the meaning to ciistomers that garments cut from these, 
patterns are true fitting. y 

I agree isrith the positioiitaken by the examiner, and the 

appeal is, therefore, denied. 

X 



otinMi(uXr (o^Qj/. 



2- 



m 



me 
:e 

at 
P- 



Ly 



a- 






reglGtration no^: asked for is the same niarK, used on the same 
goods, by the sarae "business establishnent, and the applica- 
tion therefore may "be regarded as a continuation of that 
droppedo Since under the law this trade-mark is entitled to 
registration for the foe paid in 1876, and has not rocoivcd 
such registration, I am inclined to thinlv the Office 770uld "oe 
justified in granting applicant's request. It seems to he 
purely rithin the Comnissioncr ' s discretion, 

(Signed) 5". A. Seely, 

Examiner Trade-MarKs. 
Jan. 24, 1894. 




Application of 

Hiimiciis ec CO. , 

No, 45,704, 

filed Jan. 10, 1894. 

I know of no precedent quite parallel to this re- 
quest, which is nade under Section G of the act of llarch 3, 
1881. This provision of lar was to enable persons who had 
registered trade-narks under the act of 1870, to obtain reg-' 
istration under the new law withoiit paying an additional fee. ^ 
Hence onr unifoni practice of crediting on a new application ■ 
the fee paid for the old registration of the same mark. 

On March 20th, 1876, C.P.A.Hlnrichs registered the 
sane inark for the same goods as nov; applied for 'oy Kinrichs 
8c Co. He filed an application ira-.iodiately after the enact- 
ment of the present law, to wit, April 28, 1881, for the re- 
registration contenplated in section 6 and Paragraph 17 trade 
mark rules, and to this application the fee v/as duly applied. 
The office action being adverse, no further steps were talcon 
by the applicant, though no reason is seen why the office ob- 
jection could not have beei: easily overcome. 

On Jan. 10, 1804, the ownership of the nark having 
meantime vested in the firia cdT Hinrichs & Co. a new applipa-,^ 
tier. ir. filed on behalf of the firm. Prosecution of the old 
application was impossible, since if successfixl it would re- 
sult in a gretnt of the certificate to a person other than the 
owner, which v.nder the CommlsGioncr' s ruling in nx parte Bas- 
sett (55 O.G. 997) is unlawful. Tlius in consequence of the 
change in ownership the 1981 case had to be dropped. But the 

1 1 



^ 1 



^■■ii 



Hcarinc Jan. 30, 1894. 



U. G. Patent Office 



Hinrioh & Company, 



Tradc-MarX Resistration. 



Petition. 



Application filed Jan. 10, 1894, No. 45,794. 



Mr. J. R. ITottirighai"! for ap'^licants. 



This iB a petition that the fcoc for a trade-iTiark registered 
under the act of 1870 be applied to the prose:-t application. 

Under all the circvoustances of the case the request seems to 
"be a reasonable one, and the petition is, therefore, granted. 

(Signed) G. T. yisher, 

Assistant Coraniscioner. 
Jan. 30, 1804. 






lo 



of 
n Ex parte Hlnriohs & Co., 



Decided Jaji.SO, 1894. 




S. T. FISIER, ACTING COmilSSIOIffiR: 

This is a petition that the fee for a Trade-MarK. reg- 
istered under the act of 1876 be applied to the present applica- 
tion. Under all the circuinstances of the case the request seems 
to be a reasonable one, and the petition is therefore g:.anted« 



On March 20, 1876, C. P. A. Ilinrichs registered the same 
mark for the same goods as now applied for by Hinrichs & Co. lie 
filed an application imnediately after the enactment of the pres- 
ent law, to wit, April 28, 1881, for the re-registration contemplat 
ed in Section 6 and Paragraph 17 trade-marK. rules, and to this ap- 
plication the fee was duly applied. The Office action being ad- 
verse, no further steps were talien by the applicant, though no 
reason is seen why the Office objaction could not have been easily 
overcome. 

On Jan. 10, 189^, the ownership of the marK. having mean- 
time vested in the firm of Hinrichs & Co. a nev/ application is 



-a-af" ^- ^""^^ -li^;ilS*E:_ 



Hinrichs & Co., Sheet -2- 
filed on behalf of the firm. Prosecution of the old application 
was impossible, since if successful it would result in a grant of 
the certificate to a person other than the o;vner, which under the 
Commissioner's ruling in ex parte Bassett (55 O.G, 997) is unlaw- 
ful. Thus in consequence of the change in ownership the 1881 
case had to be dropped. But the registration now asKed is: for 
the same mark, used on the same goods, by the sam.e business es- 
tablishment, and the application therefor may be regarded as a 
continuation of that dropped. Since under the law this trade-marfe, 
is entitled to registration for the fee paid in 1876, and has not 
received such registration, I am inclined to thinl: the Office 
would be justified in granting applicant's request. It seems to 
be purely within the Commissioner's discretion, 3p~A-.'\' 



•-*• 



■^^^WP 



244 



\ 



' - v:"Tj- ■^ T>'^ 



'A of ' 

^TANDARE ZURliTURE CO.., 
Deoided Jan. 51. 1894 . 

Recorded Vol. 54, Papre 67. 

oOo 

FISIIER, ASSISTAITT COLLIISSICJIER: 

This is a petition from the examiner of trade-iaarK:s re- 
fusing to register the vs-ord "Standard" as a traae-marlc for desks. 
The examiner states that - 

"The refusal is made upon the ground that the word is 
of such a character as all manufactures are at equal liberty 
to use upon their merchandise, and therefore can::ot "be monop- 
olized by any one." 

As a general nile mere words should not be registered unless 

they are purely arbitrarj''. Words expressive of the character of 

an article cannot be monopolized to indicate origin or ownership 

(Larabee o: Co. v. Lev/is, American Trade-MarS. Cases 5G0,and cases 

therein cited). A distinction, however, should be made between 

words Y;hich directly express the nature or some quality of the 

article and those which only secondarily sug::;est such nature or 

quality. For instance, the words "Rye ana Rock" are distinctly 

indicative of the ingredients of a certain medicine, and those 



f^mm^ 



_^71- 



Standard Furniture Co. ^ Sheet -2- 

words cannot "be monopolized as a trade-mark for that class of 

articles (Van Beil v. Prescott, American Trade-Mark Cases, p. 314) 

also the words "Straight Cut" for cigarettes on the saine principle 

have been declared an invalid trade-mark (Ginter v. ICinney Tobacco 

Co. jet jO,., 12 Fed, Rep., 782.) On the other hand, the words 

a 
"Pain Killer" Y;-ere held to be a proper trade-mark for certain 

kind of medicine (Davis v. Kendal, American Trade-Mark Cases, 112) 

and "Anti-Washboard" for soap has also been sustained (O'Rourke v. 

Central City Soap Co., CD. 1086, 217). Applying this test to 

the case in hand it is thought that if the definitions of the word 

"Standard" given by the examiner, viz: 

"'That which is capable of satisfying certain defined, 
conditions fixed by proper authority'". 

"'That which is established as a rule or model by the 
authority of public opinion or by custom or by general con- 
sent; that which serves as a test or measure.'" 

were the only meanings of that word, it might, perhaps, stand the 
test and be a lawful trade-mark, but there is another sense in 
which that word may be and is comir:Only used. Wlien used as an ad- 
jective The Century Dictionary gives as its meaning: 

"Serving as a standard or authority; regarded as a type 
or model; hence, of the highest order; of great worth or ex- 
cellence." 

and gives as Illustration of the use of that word with this mean- 



^^ il .ft 



44 



1 



24 



*J 



p24(-; 



* 



standard ITurniture Co., Sheet -3- 

ing the following: 

"•In oonely Rant call ev'ry Merit forth; 
Imprint on every Act its Standard Worth. ' 

Prior , Carmen Seculars for the Year 1700." 

"'The proved discovery of the forgery of Ingulfs Histo- 
ry of CroTTland ATDbey was a fact that necessitated the revis- 
ion of every Standard hoa'k on early English History.' 

Stubbs« Lledieval and I.Iodern Hist., p. 4G." 

How it is this sense in which this \70rd may "be used that ren- 
ders it just as illegitimate as a trade-mark as would be the word 
"Splendid" f ex pa rte Stokes, 64 O.G., 437). Registration, thers- 
fore, should be and it is hereby refused. 

It is not thoughtthat simply because this word has been 
previsouly registered it should unduly influence this conclusion, 
whatever may have been the circ-omstances under which the examiner 
has registered it. 

Trie decision of the examiner is affirmed. 



X 



'i 

\ 



247 



y:? 



ALLkl£.A112E 
of 

JAMES BUTLER. 



Decided Fe-p, 16.1894. 

Recorded Vol. 54, Page 150 . 

oOo 

FISHER, ASSISTANT COLE :i SSI CNER: 

This Is an appeal fron the decision of the primary exam- 
iner refusing to register the word "Peerless" as a trade-marii for 
tea. 

It is the esta'Dlished practice of the office to refuse 
to register as a trade-marX T;rords of general usage; that is to say 
such words as are coimnon and adapted to "be used in the same man- 
ner as is intended "by the trade-mar&^and in which there can be no 
individual ownership upon which to base the right to a trade-mark. 
Such a word is "Peerless." It is defined in the Century 
Dictionary as follovrs: 

"Uneciualed; having no peer or equal; unmatched^' 
"But now it is my glory to have loved 
One peerless , without stain.'' 

Tennyson, Lancelot and Elaine. 
-Syn. Matchless, unsurpassed." 

The word "Peerless" then has no more right to be regis- 



■1-. .^ 



—211 



J. Butler, Sheet -2- 
tered as a trade-mark than would the words "unequaled, " "unmatch- 
ed," "matchless" and "unsurpassed." They are clearly words In 
Which no one claim ownership for any purpose whatever. 
The decision of the examiner is afiirmed. 



.^:i:^ 



i 



249 



y 



mumi^ 



ot 
MqD ANI.EL 4 K 2RR 0^, 

Decided March 5 « 1894 . 

Recorded Vol. 54. Page 161 . 

FISHER, ASSISTAIIT COi/B-ilSSIOUER: 

This is a petition that the fee of twenty-five dollars 
"be refunded, registration of the trade-marlc havingNbeen refused by 
the office. Applicants claim that such fee can only be demanded 
by the office "for the grant of registration;" that under Revised 
Statutes, section 4936, all money paid by raistalie into the Treas- 
ury may be refunded, and that in print and label cases - 

"the fee is returned on the request of the applicant when 
registration of his print or label is for any reason refused 
and he abandons his application." 

The exa:niner holds that the statute makes no provision 
for the return of fees in the rejected applications for the regis- 
try of trade-marks. This question was moreover passed upon by the 
Assistant Secretai'y of the Interior in .ex parte Thayer, 54, O.G., 
957, CD., 1891, 247, in -srhich it was held that there -Bras no war- 
rant in the law for the return St the fee in such a case. 

The petition is therefore denied. 



<^' o 1 . 



TO 



/ < 



r ■ 



of 
_I. D. RI_C_HARD_S & £C_NS_, 

Decided May 18, 1894 . 

Reoorded Vol. 54, Page 245 « 

oOo- 

'PISHSR, ASSISTAITT C01.£.il SSI ONER: 

Tills is a petition taken from the action of the examiner, 
refusing to register a trade-mar}?: in the alternative form. 

The applicants say "Our trade-mark consists of the arbi- 
trary words 'Tf/hlte Lily,' or the representation of a white lily." 
The fa£ _simi le_ shows a representation of a lily, so called, in a 
central space, surroimded "oy two circular horder lines, at some , 
distance apart, and the words "Vslhite Lily" between the circular 
lines. 

The examiner refused registration of this trade-mark on 
the ground that the words "VJhite Lily" and the picture are not 
true alternatives, and from this action the petition is taken. 

The applicants contend - aiid I fully agree with them - 
"that their trade-mark 'White Lily' is a good and lav/fui trade- 
mark, whether expressed by words or symbol, and entitled to reg- 
istration." But tlie picture or symbol shown cannot be regarded as 



1 



l^ 



a true representation of- a white Illy, or in fact of any species 
of lily. As the examiner says, it is a nondescript flower, having 
no characteristics of the lily. 

It is well settled that unless a v;ord or words and a pic- 
ture are true alternatives they cannot 'be covered "by one registra- 
tion; see _ex parte Iowa Fanning Tool Company, 51 MS. Dec, 12; ex 
_parte Adam Roth Grocery Company, 62 O.G. , 315; ex parte^ Phoenix 
Candle Company, 53 MS. Dec, 73. 

It follows, therefore, that the action of the examiner 
must be and it is hereby affirmed. 



-2- 



i^'<cytj 




C)K 



ai> 



257 



of 
GEO_RGEW_ILLI_AMHEYER, 

Decided April 5,1894 . 

Recorded Vol. 54, Page 252 , 

e©© ■ 

PISIIER, ASSISTANT COiE.IISSIOKER: 

This is an appeal from tiie action of the Examiner of 

Trade-Marks refusing to register the word "Antalgia" in view of a 

previously registered trade -mark, No. 20,502, to A. J. Ruhl, for 

the word "Antialgia." 

It seems to me that the resemolance between the two 

words is so close that it T/aild "be likely to deceive the ordinary 

purchaser. The decision of the exaiainer is, therefore, affirmed. 



M.H. 



i^O 



1 



U.S .Patent Office. 



Ex parte Joseph Zwack S: ''o. 



Trade-Mark for Bitters. 



Appeal from Primary Examiner, 



Application for registration filed January 26, 1894. 




Messrs. Munn & Go. for applicants. 



Petition is taken from the refusal of the examiner of 
■^rade-marks to register the symbol of a red Greek cross as a trade- 
mark for medicinal bitters. 

The examiner relies upon the d}cisions of Mr. ConTnission- 
er Mitchell in ex parte Chichester Chemical Company, 52 O.G., lOGl, 
wherein "Red Cross" was refused, and ex parte Candy, 40 Ms. Dec, 
474, wherein the words "Red Greek Cross" applied to couch medicine 
v;ere refused. 

Applicants rely (1) upon a written concession of the 

right to use the mark 'in their own country, Hungary, fron the 

branch of the Red Cross Society of that country; ( ^J upon their 

1 



iSij 



1 



f-ttiy 



registration of the mark in Hungary, claiming undsr this the priv- 
ileges of Article VI of the International Union; (3) u.pon al- 
leged conflict of ''r. Commissioner -/ritchell's decisions, cited 
above, with Mr. Commissioner Hall's decisions in ex par te King, 
t C.D. 1889,3, and ex parte Turner, 34 MS. Dec, 4o9. 

The first f;round herein stated the examiner correctly 
holds cannot avail applicants in this corntry, ^.s the autJiority 
concGd,-d by tV.e society in Hungary does not extend beyond the bouH 
daries of that coiintry. 

As to the second '-round, applicants contend that they 
are entitled to registry unda^r Article VI of the International 
Union entered into between the United Sta'^.es and Hungary, among oth- 
er nations, and the examiner denies the contention under the last 
clause of the same article. This article is as follows: 



"Article "*.'!. Every trade or coi-nifre 
deposited in the coixntry of origin shal 
posit and so protected in all the other 
Union. 

"Shall be considered as country of 
where the depositor has his principal e 

"If this principal establ is'iment i 
of the countries of the Union, shall be 
of origin that to which the depositor b 

"The deposit may he refused if the 
is asked is considered contrary to nora 
de-r. " 



rcial m.ark regularly 
1 be admitted to de- 
countries of the 

origin, the country 
stabl ishment . 
s not situated in one 

consid'ored as coimtry 
elongs . 

object for which it 
Is and to pTiblic or- 



Eut this bureau vms advised by t'le Attorney Gereral of 
■'■■ the Uni^,ed States, 47 O.G., 398, that the International Union has 

> 

^^not the force or effect of law in this country: It is a contract 



>b 



1 



257 



"operative in the fu'.ure, infra territorially. It is therefore 
"not self-executing, but requires legislation to render it effec- 
"tive for the modification of existing laws." 

As to the third ground, it does not appear that there is 
any real conflict between the decisions of Co'-Trrissioners -lall and 
Mitchell. 

In ex parte King, supra , a trade-mark, consisting essen- 
tially of the letters "Tt.A.R." and the representation of an eagle, 
a flag, and a star, was allowed. The Commissioner held "hat 
f'^ere v/as no suggestion in the record that the "design as used (as 
a v/ater mark on u'riting paper) would be calculated to d-iceive." 
Tie held that the fact thai the Grand Army of the Republic had pat- 
ented the representation as a design, which patent had expired 
did not deprive anot'^er applicant from registering it as a trade- 
mark. In ex parte 'i\Trner, the trade-mark consisted of the let- 
ters "K of L, " applied to gloves with a certain configuration. 
The examiner had refused registry on reference to an earlier de- 
cision of Mr. Gommissioner "-all, ex parte Bloch, CD. 1889, 54, 
v/herein V\e words "Knights of Labor," applied to whiskey, were re- 
fused registration because of misrepresentation contained upon the 
face of the "rade-mark as to the origin of manufacture and ownor- 
s'^iip. ''r. Commissioner Hall held that it was a "mere matter of 
inference" that the letters "K of L" necessarily referred to and 



K> 



I 



meant the association of Knights of Labor. 

These d-^cisions are not inconsistent with the docisions 
cited by fir. Cornmissioner Mitchell. In ex parte Candy, tlie trade- 
mark v/as si^bstantiai 1 y the same as here applied for. The Coi-nnis- 
sioner held that as the Red Cross Society had to do with hospital 
supplies and piedicines, the trade-nnark presented "woiild be cal cu- 
"lated to CLnvey t'le impression that the article was manufactur-ed 
"or its use sanctioned or approired of bj/- that society." 

The decision of the primary examiner is affirmed. 

John S. Sej'-mour 

Commi ssioner . 
June 18, 1894. 



SF,?i 



251) 



257 



25! 



'earing -Tune 29, 1094. 



S.E.T. 



U. S. Patent. Office, 



Ex parte J. M. Leveque and E.Z. Lawton. 



Label . 



Petition. 



^^'77 



Application for Re-istration filed I"Iay 14, 1894. 



Mr. J.M. Leveque and 'Ir. E.Z. Lawton Pro se. 



This is a petition taken fron the action of the examiner 

refusinr: to register a label. 

In answering tliis petition, the examiner says: - 

X H "Upon examination of the file it appears that only tv/o 
letters have been written, one of which was to inform t'''.e 
applicant that his case as presented was informal and in no 
condition for action. At the same time he H^s advised that 
v;hen in condition it would be rejected. It was not rejected 
because not presented in form for rejection. 

"In his response to this office action applicant for the 
first time presents a printed label but showed matter not 



m 



n 



259 



sut^.t^ested in his original papers . The second letter in the 
case was the firs': and only action on the label presented 
iipon which the petition is taken. This letter written I.iay 
31st formally refused registration, whereupon applicant pre- 
sents his petition to the Commissioner. I^ is respectfully 
recommended that the petition be dismissed as prematurely 
taken, and the case remanded to the examiner for such further 
consideration as apr^ears to be necessary. " 

An inspection of the case s>iows that tlie examiner's 
statements are correct. 

The petition is therefore dismissed without preju.dice 
to applicants' right to renew the same when the condition of the 
case warrants such action. 



June 50, 1894. 



S.T. Fisher, 
Acting; Comm.issioner . 
Nov/ Assistant Commissioner. 



259 



260 



^earing Jxilv 24, 1894. 



S . E . T . 



U.S. Patent Office. 



Fx parte W^. Schmidt Baking Oo-'-pany. 



Crackers, Biscuits, (5:c. 



cTJ^A 




Petition. 



Appnication for rej- istration- f 13 ed May 2G , 3894, No. 46,795. 



Mr. Harry G. Kennedy for applicant. 



This is a petition taken from the action of the examiner 
refusing to register the words "New England" as a trade-mark for 
crackers, biscuits, and v/afers, on the ground that it is t. geograph 
ical name. 

It is a general principle that geographical names cannot 
be registered as trade-marks. American Sardine Co., CD., 1073, . 
82; ex parte Marsching ,5: Co., 15 O.G., 294; CD.? 1878, 143; 
ex parte Knapp, 26 O.G., 310; CD. 1879, 14 3 ; ex parte ?arnum 
&. Co., 18 O.G., 412; CD., 1080, 155; ex parte American Sav/ Co., 
58 O.G. , 154; CD. , 1892, 19. 



O 
/^ 



6 



1 




im 



I, 



In several cases, hov^evsr, an exception to this princip^ 
v;as recognized on the ground that geographical names like any 
words may be c'^osen and arbitrarily applied v/hore there is no de- 
ception as to the quality of goods or origin of their manufacture. 



Ex parte Oreen.C. ). , 1875, 121; ex parte Oorm/all Sc Pros., 12 
O.G., 312; CD., 1877, 85; ex part e Dover Stamping Co., 51 0. '., 
1704; CD., 1890, 94; ex parte Jenkins,' 55 O.C, 759; CD. 
1890, ICl; and ex parte "*'ississippi 'tI^ss Co., G4 O.C, 713. 

The most recent authority upon tiiis subject, hovz-e^'er, i'j 
the decision of the Supreme Court in Columbia Mill Co. v. Alcorn 
et al : , 0.'";., 19 16. In this case the complainant brought a 
bill to restrain the defendants "rom iising the word "Coliun.bia" on 
a brand placed on flour sold by them. The complainant alleged that 
t'lis v.'ord had been selected as a fanciful and arbitrary name or 
trade-mark . 

'■'he Court inter al ia , said: - 

"The word ' Columbia' is not the subject of exclusive ap- 
propriation under the general rule that the word or words, 
in oramon use as designating locality, or '--ection of a coun- 
try, -•=irinot be appropriated by any on, as his exclusive trade- 
mark . X K K 

"The applicant was no "iore entitled to the exclusive 
use of the word 'Coluinbia' as a trade-mark than he would have 
been to the use of the word 'America', or 'United States', or 
■•"innesota ' , or 'Minneapolis'. These merely geographical 
names cannot be appropriated and made t'-.e subject of an ex- 
clusive property, "''hey do not, in and of themselves, indi- 



260 



cate anything in the nature of origin, manufacture, or owner- 
s'- ip; and in the present c4se tJte word 'Colnnbia' gives no 
information on the subject of origin, prodiiction, or owner- 
ship." 

In view of the doctrine set for'^.h by this decision, it 
appears to me that "Mew England" cannot be registered as a trade- 
mark, since it is the ordinary, well knovm and most fsi^^dliar name 
applied to a c rtain section of the United States. 

Furthermore, it seems to -.e th-^t the words "New England" 
as applied to crackers, biscuits S:g . , are calculated to produce an 
impression that the goods are made in ^TeAv Enn:land or from a Mev/ 
England receipt. If truthful, the words are objectionable as be- 
ing descriptive; if not, they a.-'e still objectionable as being de- 
ceptive. Wlif ther tr\ith.ful or deceptive, thoy should not be regis- 
tered. 

Furthermore, any one in New England making the goods th" l: 
applicant does, eoi'ld with equal right and trut'i adopt and use the 
words "New England" as a '-ark for '^lis goods, and as was said in 
Cox's ^1anual of^ Trade-'Tarks, Sec. 473, the New Englander would 
have the better right to the word, al though not an exclusiv_. righ'; 
If oti^ers than applicant ha-'e such a right to use the naiTie upon 
the class of goods cited, it cannot be a trade-mv.rk, as the essen- 
tial element of exclusive right to its use is lacking. 

I am of the opinion that the examiner acted correctly in 
refusin- registration of the words "Now England" as p. trade-mark 
■, . ■,.•/_ . . 3 



2bU 



for crackers, biscuits and wafers, and his action is therefore af- 



f irr.ed. 



, T. T^isher, 



Actin^T Commissioner. 



July 27, 1894. 






iiiU 



261 



Ex parte V/. C. Bevan & Go. 



Label . 



Appeal . 



Application for registration filed ^lay 24, 1894, No. 4-G,776. 



Mr. Horace Pettit for applicants. 



Tliis is a petition from the decision of the examiner of 
Trade-Marks refusing to register a label. 

This label bears a sentence at the top in black Arabic 
C^iaracters; below this, is the applicant's trade-mark in black and 
gold, a conventional representation of a fortified castle, with a 
cresent and star on each side. The rest of the label recites the 
origsn and qualities of the beverage or remedy, and is tastefully 
printed in black, red, and gold, the whole label being surrounded 
by a bord'ir of gold. 

The question of the registry of labels was considered 
at length by the Supreme Court in Higgins v. Keuff el , 55 O.G., 
1139; CD., 1391, 403. In that decision it was said that the 
eighth section of article one of the Constitution "does not have 



■ ^63 



1"^ \ J' •»-> 



"any reference to Labels which simply designate or describe the 
"articles to v/hich they are attached, and which have no ^^alue sep- 
"arated from the articles, and no possible influence upon science 
"or the useful arts." It was also said, "To be entitled to a 
"copyright the article must have by itself some value as a composi- 
"tion, at least to the extent of serving some purpose other than 
vas a mere advertisement or designation of the subject to which it 
"is attached. " 

I am of the opinion that the present label fails to reach 
the standard set up in the decision noted above. 

The decision of the examiner is affirmed. 




'-'^'f-fuAc^a^.^Lc^,^^ 



E: .'£«(. 



:<."-^ 



'{} 



263 



2(7 4 



265 



UNITED STATES PATENT OFFICE. 
000 



In re application of -Tames IXinlap 
for Registration of Trade Hark, 
filed December 27th, 1893. 



"The following are the points on which the appeal is 
taken, to wit: That the Examiner erred in holding that my Trade 
Mark "Dunlap Carpet" vras m;rely advertising and descriptive lan- 
/liua.^e used in its common meaninj^, and incapable of cons'; i tut ing a 
valid Trade Mark; that t^ie Examiner erred in holding that the v^ord 
"Dunlap" was merely the name of the applicant and could not there- 
fore be registered by reason of Section 3 of the Ac" of 1881, and 
that the said Examiner erred in not finding that applicant's Trade 
''ark is a ~ood and valid Trade Mark and one suited for and capa- 
ble of registration, and tha*: he erred in not accepting and regis- 
tering the said Trade '^ark. " 

y 



17 4 






Endorsement*. 



The decision of the Examiner 
of trademarks refusing registration 
to the words "Dunlap carpet" is 
affirmed. 

John S. Seymour 
Commiss ione:'. 
July 31, 94. 



265 



b-A 



26.> 



0(, 



u 



In re Shav/ Pirothers. 
Trade -Mark, 

?iled March 23rd. 1894 
No. 4Cy 349 



Application pending before 
Examiner in Room #221 



--0- 



The Commissioner of Patents, 



Present 



Sir 



Appeal is hereby taken to the Commissioner of Patents in 
person, from the action of the Primary Examiner. 

The points upon which appeal is taken are as follows: 

First: The Primary Examiner has erred in not according 
this case favorable consideration. 

Second: The Primary Examiner has erred in holding that 
the application is incomplete, in ruling that there is no 
showing or declaration that the trade-mark is used by appli- 
cant on the merchandise recited in commerce with foreign 
nations. 

A hearin" on this appeal is requested at an early date. 

Very respectfiilly 

J. Nota MCGill, 
7 July 1894. Attorney 



;i>u 



O/ 






r 



'' The class of merchandise to which this trade-mark is 
appropriated is agricul ttiral machinery and implements, farm 
tools and hardware, and the particular description of goods 
comprised in such class on which it is used by us thrashers 
engines, harrows, plows, cultivators, binders, mowers, rakes, 
shovels, hampers, wrenches, axes, hatchets, forks, nails, 
screws, bolts, hinges and the like. , 



26 (> 



«u^ 



DECLARATION. 



1^ \ 



l\ 



Kingdom of Great Britain ) 

(ss : 
County of Warwick ) 

A.R. Walker, being duly sworn, deposes and says that he 
is a member of the fir-" of Shaw prothers the applicant named 
in the foregoing specification; that he verily believes that 
f^-e foregoing statement is true; that said firm at fiis time. 
has a right to the use of the Trade-Mark therein described; 
that no other person, firm, or corporation, has the right to 
such use, either in the identical form or in any such near 
resemblance thereto as might be calculated to deceive; that it 
is used by the applicant in commerce with the United States, 
Canada, Argentine Republic, Germany and France; that the 
description and fac-simile presented for record truly repre- 
sent the Trade-Mark sought to be re^:istered, and that he is a 



subject of the Queen of Great Britain. 



:f 



2PAi 



"67 



(^ 



Endorsement. 



It is considered that a case has been made out enti- 
tling the applicants to registration. 
The action of the examiner, therefore, refusing it, 



is set aside. 



John S. Seymour, 



Commissioner, 



August 1, 1094. 



^ 



- ■-- w 



26(J 



s 



267 



Hearing June 8, 3 094. 



S.R.T. 



U. S. Pa';ent Office. 



Ex parte Charles William Nau. 



Trade-''ark for Medicinal Preparation. 



y^ J^^^l-l/a^ /Jj' 



Petition 



Application for regitration filed April 23, 1894, No. 46,569, 



Mr. H. T.^, piaisted for applicant. 



This is a petition taken fron the action of the examiner 
of Trade-Marks refusing to register the larord "Tiarkish" as a trade- 
mark for a veterinary renedy. 

The examiner refused registration on the ground that the 
word is -eographical ly descriptive and on general principles such 
words do not constitute registrable trade-marks; that since Turkish 
horses are famous, it may be reasonably supposed that the '"urks 
have some skill in compounding horse remedies; and this v;ord ap- 
plied to such a compound would lead purchasers to believe that the 
remedy is Lised or approved by t'le Turks. 

It is a general principle that geographical names cannot 



20 > 



- % ^ . 269 

be registered as trade-marks. American Sardine Ho., CD. 1873,82: 
ex parte Marschinr & Co., 35 O.G., 294, CD., 1878, 143; ex pa rte 
Knapp, 16 O.G., 318; ex parte Y^'-xmm & Co., 18 0.'?., 412; ex 
parte Eloch & Co., 40 0.0. ,443; ex pa»'tc American Saw Co., 58 
O.T., 154. 

In several decisions, however, an exception to this prin- 
ciple was recognized on the ground that geographical names like 
any words, may be chosen and arbitrarily applied where there is 
no deception as to the quality or origin of the manufacture. Ex 
parte Green, CD., 1875, 121; ex parte Cornwall <& Bros., CD., 
1877, 85; ox parte Dover Stamping Co., 51 O.'C, 1784; ex parte • 
Jenkins, 53 O.G., 759, and ex part e Mississippi Glass Co., G4 
O.G.,713. 

The most recent authority upon this subject, hov/ever, is 
the decision of the Supreme Court in Colvimbia Mill Go. v. Alcorn 
et al . , 65 O.G., 1916. In this case the complainant brought a 
bill to restrain the defendants from using the word "Columbia" on 
a brand placed on flour gold by them. The complainant alleged that \ 
this word had been selected =is a fanciful and arbitrary name or 
trade -'-'ark. 

The Court inter al ia , said: - 

"The word 'Columbia' is not the subject of exclusive ap- 
propriation under the general rule that the word or words, 
in common use as designating locality, or section of a coun- 
try, cannot be appropriated by any one as his exclusive trade- 



,) ^ 



mark. k x x k 

"The applicant v/as no nore entitled to the exclusive 
use of the word. 'Columbia' ^s a trade-mark +'han he would have 
been to the use of the v;^ord 'A'-Terica ' , or 'United States', of, 
'Minnesota', or 'Minneapolis'. These merely geographical 
names cannot be appropriated and made the subject of an ex- 
clusive property. They do not, in and of themselves, indi- 
cate anj/'t^iin'T in the nature of origin, manufacture, or ownai'- 
ship; and in the present case the word 'Columbia' fj-ives no 
information on the subject of origin, production, or owner- 
ship. " 

In view of the decisions cited, it seems to me that the 
worr) "Turkish" as applied to a veterinary remedy is calculated to 
produce an impression that the re-edy is made in Turkey or frO' a 
Turkish receipt, especially in -^'iew of the fact that "urkish horses 
are famous. If truthful, the word is objectionable as being de- 
scriptive; if not, it is still objectionable as bein;7 deceptive. 
\Tihether truthful or deceptive, it should not be registered. 

Furthermore, any one in Turkey using or making, or who 
may hereafter use or m.ake, sue/ a remedy ?.s applicant could, wit""; 
equal right and truth, adopt and use the v;ord "Turkish" as a m.ark 
for his goods, and as said 'in Cox's Manual of Trade-^'arks, Sec. 
473, t'--:e Turk "would have the better right to the word, although 
not an exclusive right." If others than applicant have such a 
right to use the name upon the class of goods, it cannot be a 
trade-'-^^ark , as the essential element of excltisive right to its use 
is lacking. 

Under all the circr;mstances of the case, I am of t^e 



26' 



opinion that the examiner acted correctly in refusing; re5is^ration 
of the ?/ord. "Turkish" as a trade-mark applied to a veterinary 
remedy. 

The action of the examiner is therefore affirmed. 

S.T. Fishier 

Assistant Cor-missioner. 
July 24, 3 894. 



r t^ 



t] 3 






i 



_IK_TERFEREN£E 

R L 1 ^E !• ^ L LIE?: -A £°.-' 

Decided Jan. 21, 1895. 

Recorded Vol. 56, Page 3G. 

oOo 

SEYKOUR, COlUvil SSI ONER: 

Silver £■ Company appeal frora the decision of the examin- 
er of interferences awarding priority of use and adoption of the 
T7ord "Rochester" as applied to oil stoves to Upton. 

The folloY;ing facts are found to "be true: Oil stoves marked 
"Rochester" were made "by Upton in 1884 and were sold in 1887 and 
1888. Prior to the filing of his statement and declaration Upton 
had sold such stoves, V7ith the word "Rochester" affixed, in Eng- 
land and elsewhere aToroad. 

During the early part of 1891, or perhaps in the fall of 1890 
Silver went to Upton at the factory of the latter in Nev; York and 
proposed to huy of him parts of oil stoves and of the Rochester 
laTiip, also made by Upton, and to pay Upton a royalty for the -ise 
of the v/ord "Rochester"iipon all the goods into which the parts 
bought from Upton were incorporated. But Silver preferred to buy 
the parts at a somevmat high price without the pajnient of any ad- 



r>^ 







'^7t 



ditional sum for the uso of the v/ord "RoGhester. " ITo agreement 
v;as reached, dissensioii arose, and Silver rent av/ay threatening to 
mahe the stove and to use the v7ord "Rochester" as a designating 
mark. Silver hac' no factory, or warehouse, or place of "business in 
Rochester, and proposed to manufacture and sell the stoves from 
his establishment in Broolclyn, in the State of Nev; York. 

I find also that Upton v.'as the first to adopt the rord "Roch- 
ester" as a designating mark upon oil stoves, and viae the ovmer 
thereof. 

No oTbiJection is raised before rae to the use of the word "Roch- 
ester" as a trade-mark, and I forcear to express an opinion there- 
on. Upon the mere question of priority, the judgment of the ex- • 
aminor of interferences in favor of Upton is affirmed. 



-2- 



TO 



Fearing August, 2, 3 894. 

U. S. Patent Office. 



S.E. T. 






3 



Ex parte Joseph Zv/ack 8z Go. 



Trade-Mark for Bitters, 



Si 



/•^^ 



Petition. 



Application for registration filed January 2G , 1894, No. 45,917. 



r.'essrs. Munn & Co. for applicants. 

This is a petition for t'^e return of the fee in the 
abo'^e entitled case, registration having been refused. 

There is no provision in the law or rules for the return 
of a fee for an application for the registration of a trade-mark, 
The office has examined the case and the fee is paid for such ex- 
amination, regardless of whether registration is granted or not. 
The petition is denied.. 

S.T. Pisher, 
Assistant Commissioner. 
August 2, 1894. 



' 'j^ -^JLUJH )jmfMivx:r 



/ . 



»> 




I 



^^^^Mi 






J73 



o-^-- » 



COPY. 

DEPARTI'/IEITT OF TPE IlITERIOR. 

A . II a B . S s 

United States Patent Office. 

V/ashington, D.C., Dec. 27th, 18G4. 
Mr. Max Georgii, 

Washington, D.C. 
Sir; 

Your lot'cer of the 22nd inst, has teen received. 
In reply thereto I am directed by the Coi-maissioner to 
say , relative to thp application of Pranz Kathreincrs Nachfolger 
for the registration of a trade raark, No. 45,351; filed Nov. 2, 1093 
that the fee of tv;ent,yfive dollars, filed Noveiaber 2, 1803, with 
said application, has "been transfered to the application of 
Kathreiner's Malzkaffee-Pabriken nit heschranlcter Haftnng, in 
viev o f ex parte Ba ssett, 55 O.G., 987; and the Assistant Com- 
missioner'a action(unrecorded) of Jan. 30, 1894, in the case of 
Hinrichs & Co. 

Very Respectfully, 

(Signed). J.T.Nev;ton 
In reply^.ple—'- -efervto #124,486. Chief Clerk. 



274 



27 



No. 40,148, filGd Doc. ..8, 1894. 

Kathreiners I.Ialzkaffee-PabriKen, 




■«va*> 






REGISTRATION OF LABELS. 

Ex Paete Eldredge & Co. 

Decided May 27, 1891. 

Labels — What may not be Eegistered: 

A label consisting of the name of tlie article contained in the bottle or package to which it is 
applied, a statement of the uses of the article, directions for applying it, the price at which it is sold, and 
the name and address of the firm by which it is prepared, and exhibiting no attempt at art or literary 
merit, is not entitled to registration under the recent decision of the Supreme Court of the United 
States as announced in the recent case of Higgins et al. v. Keuffel et al. (55 O. G., 1139). 

On petition. 

Application of J. B. Eldredge & Co., filed February 9, 1891. 

Mr. F. W. Smith, Jr., for the applicants. 
Mitchell, Commissioner: 

This is a petition from the action of the Primary Examiner refusing to register a 
Label. 

The Label consists of the name of the article contained in the bottle or package to 
which it is to be applied, a statement of the uses of the article, directions for applying it, 
the price at which it is sold, and the name and address of the firm by which it is 
prepared. These are in ordinary type and exhibit no attempt at art or literary merit. 

In Higgins et al. v. Keuffel et al. (55 0. G-., 1139) it was held that the clause of the 
Constitution under which Congress is authorized to legislate for the protection of authors 
and inventors has reference only to such writings and discoveries as jgire^the result of 
intellectual labor ; and it does not have reference to Labels which simply designate or 
describe the articles to which they are attached, and which have no value separated from 
the articles and no possible influence upon science or the useful arts, and that to be 
entitled to a copyright the article must have by itself some value as a composition at least 
as serving some purpose other than as a mere designation or advertisement of the subject 
to which it is attached. This doctrine thus laid down was applied to Labels registered in 
the Patent Office. 

The Label in the present case clearly belongs to the class which the court held were 
not entitled to registration, and therefore the decision of the Examiner is affirmed. {55 
0. a., 1278.) 

noibSm 






APPLICATION 
£_TANLEY A. £^Hlii» 
Decided Dec. 4, 1894. 

' I^eGoy<^o<^ Vol. 55, Page 412 . 
PISHER, ASSISTANT COIC.IISSIOIJZR: 

This is an appeal fron the dGCisior. of the exaiaincr of trade- 
marks refusing to register a label presented by tr^e applicant. 
This label consists of a slip of paper bearing the v;ords "Uitric 
Acid" printtid in large type, folloT/ed by T/ords in sraaller type set 
ting forth the symptoms of poisoning by nitric acid, and conclud- 
ing with three specifications or recipes under the head "Anti- 
t dotes. "Across the label in red inlv is printed the v/ord "Poison." 
This label has been refused registrati_on by the examiner on 
the ground that it does not meet the requirements of the copyright 
I law as defined in the Supreme Court decision Higgins vs. Keuffel, 
55 O.G., 1139, and other cases, especially ".7. C. Bevan & Co., 5B 
MS. Dec, 151, and Scovilie v. Toland, 6 V/estern Law Journal, 04. 
That is to say, the examiner holds that the label contains m.ere 
descriptive and advertising matter and possesses neither the ar- 
tistic nor literary quality that ^^rould entitle it to the proteo- 

-1- 



^SF 



EJ^ 



276 



n 



1 



2' 



tion of the copyright. 

I thinly it irj evident that this label is valuable only when 
GonriGcted vrith a drug, for the inforiaation it contains is, of 
course, dorived fron Yj-ell Icno^m publications. The label is not of 
itself intended to instruct or amuse the reader. I do not think 
it can be deemed the product of "intellectual labor" and I do not 
thinly it can in any sense "promote the progress of science and the 
useful arts. " 

I may say in addition that this label is of a hind old and in 
conr:_on use. I have before me tiro labels bearing the name of the 
drug and word "Poison", a shull and cross bones and tiio word "An- 
tidote" followed by the proper recipe; and these labels are such 
as have been conv.only used and may be procured by any one desiring 
to use them. 

The decision of the examiner is affirmed. 



It : a 



I 



27 s 



Oi 



vi 







79 



of 
Decided Dec. 6, 18G4. 



Recorded Vol. 55, Page 414 . 
FISHER, ASSISTAl-IT COinnSSIOlIER: 

This is a petition fron the exaaniner's refusal to register a 
trade-niarlc. 

The examiner states that in his opinion the applicants have 
clearly estdrblished their right to register, but that ho does not 
feel at liberty to grant siicli registration in viev: of a trade-mark 
registered November 10, 1874 by another party. 

The conclusion of the examiner that the applicants are really 
entitled to registration seons to me warranted by the record. 

The petition is therefore granted. 



2TS 



m 



m 



of 

W. D. LAT_HR£P & ££•» 

Decided Dec, 17, 189^ . 

Recorded Vol, 55, Page 438, 

oOo 

PISHER, ASSISTAIIT COmiISSIO:iER: 

This is a petition from the refusal of the examiner to reg- 
ister applicant's trade-mark, which consists of the v'ord "BUPPALO" 
printed in a curved line above "a conventional representation of 
the head of a Buffalo or Araerican Bison" and the word "Brand" in 
a reversed curve below this representation. The applicant states 
that the "essential feature of the trade-mark is 'Buffalo Brand'". 

Several objections appear to the registry of the mark in the 
form in irhich it is presented; In the first place, a trade-mark 
consisting partly of a v;ord or v/ords and partly of a pictorial rep- 
resentation supposed to be alternative forms of each other, should 
not be registered unless they are strict alternatives. Ex parte 
Lazarus, Sch-srarz & Lipper, 64 0,G,, 1396; CD., 1893, 119. Then, 
too, the pictorial representation should show a complete buffalo 
and not merely his head; in addition, the head shovm appears to be 



-1- 



^ 



Hauji- . 



mmtk. 



«3.' 



279 



the head of a hison which is cosinonly hut erroneously termed a hxif- 
falo. Another objection is" that it is impossible to tell from the 
description whether the applicant means to cover the i^ords alone, 
the pictorial representation alone, or both together. 
The decision of the examiner is affirmed. 



-2- 



"4' i'^ 





I 



•279 



of "" 

Decided Moli. 30, 1895 . 

Reeorded Vol. 56, Page 316. 

SEYMOUR, COMiasSlOlTER: 

This is an appeal taken from tlie refusal of the examiner 
to register the word "Scientiflo" as applied to suspenders. 

The question is whether the applicants can lawfully ex- 

V 

elude others from using the word Scientific as applied to suspen- 
ers. The word itself is a coEEaon and much used adjective, apt to ^ 
describe intellectual woift:, methods, or instruments used or useful 
in scientific pursuits, to describe generally a person engaged in 
such pursuits, and to describe a class of work done by the accurate 
and systemactic. In a secondary and someish^i illegitimate sense 
it is corasonly used to describe an article, as is attempted in this 
case, were this ojiployed as a trade-marfc the applicants' suspen- 
ders would be known as "scientific suspenders." The word has an 
adaptation to' this use in colloquial speech, and while such is not 
according to the strict proprieties of language, it is tho^ht to 

be descriptive when applied to the article in question. Ih a sec- 



2S0 



ondary sense, a suspender would "he well described as scientific i£ 
It were claimed to ecibody and did emlxJdy the application of rule 
and principle in its construction in an tmusual degree. 

Such clearly is the meaning of the ^plicants, for in the 
critical point, the "heart"as it is called, they insert a piece of 
wire gauze for strength* and count much upon this feature as a 
merit in their suspenders. While scientific does not fully describe 
the article, it is intended to describe it as far as it goes, and 
the word camiot be registered on that account. In this respect 
it differs from coined words intended to suggest the comppsition, 
quality, or charistic of an article, but not to define it by the 
eraployGient of well-known words in coraiiion use. 

The decision of the examiner is affirmed and the appeal 
dismissed* 



osn 



281 



5 




of 

Decided Mch. 30, 1895 .- 

Recorded Vol, 56, Page 319, 

o Oo 

SEYMOUR, COMHSSIOITEB: 

This is an appeal taken from the refusal of the examiner 
to register the word "Gauze" as applied to suspenders. 

The applicants make an improved suspender by Inserting a 
piece of ^ire gauze in the heart, covered on either side with leath-* 
er or canvas. On this account they may properly call their article 
of manufac:$ure "Gauze suspenders"* 

It is thought that the word Gauze aceuraitely and truth- 
fully defines the chief characteristic of the suspender, and that 
for that reason it was properly refused registration as a trade- 
mark. 

The decision of the examiner of trade-marks is affirmed 
and the appeal dismissed* 



fm^ ■--■ 'O' 



■ 




283 



1 






W 



APPLI_£ATI__ON 
of 

Decided lloh, 35, 1895 . 

Reoorded Vol« 56, Page 301. 

FISHER, ASSIT-AIJT COmilSSlClJER: 

Ells is a petition from the examiner's action refusing 
to register a trade-maifc for dress and corset stays, the essential 
features of which are alleged to te "a parallelogram divided diag- 
onally into two triangles, one dark and the other light*" 

The examiner holds that the words "dark" and "light" in- 
clude many colors and shades and therefore the claim is not def- 
inite, hut if applicant changes these words to black and white, 
respectively, which would make the claim strictly in accordance 
with the facts i^llustrated by the drawing and by the copies sub- 
mitted, there would be no objection to registration* 

It is substantially contended, however, on the other 
hand on behalf of the petition, that he should not be required 
to limit himself to any particular color, that although he changes 
the colors of the trinagles so long as one is of a light color 
and the other dark, the trade-mark ranains the same. 



284 




1 



i 



It seems to me that the essential feature of applicant's 
trade-mark is a parallelogram divided diagonally into two triangles 
of contrasting colors. If applicant amends his case to set this 
forth, I cannot see any objection to registration* 

To the extent above indicated, the action of the examiner 
is overruled. 



iS4 



BEBF*' 






^ 






% 



2^6 



^ 



APPLICATION 

-oOo 

FISIIER, ASSISTANT COMMISSIOHER: 

This is an appeal t alien from the action of tHe examiner 
refusing to register as a trade-mark for optical goods a symbol 
consisting of a representation of the human eye and the lejster "C." 

The examiner refused registration on a previously reg- 
istered trade-mark consisting of the two letters "I, C" used upon - 
the same goods several years prior to the adoption of the mark "by 
applicants. 

In refusing registration, the examiner said, in his let- 
ter of March 27, 1894: "applicants'* mark hears such resemhlance, 
when addressed to the ear, as would leM to deception among the 
purchasing public," and in his letter of April 10, 1894, that the 
mere substitution for the letter I of the picture of an eye, "the 
remaining element of the synibol, viz., the letter,. "Off being identJr 



-1- 



286 



28- 



cal with that of the reference, « in the opinion of the Examiner 
constitutes such close resemtolance as is calculated to deceive 
the purchasing public. " 

Applicants contend that there is a marked difference "be- 
tween their pictorial representation of the hianan eye and the let- 
ter "I"; that to the sight, the tvro marks are clearly distinguish- 
able from each other by the ordinary purchaser; tliat while they 
admit that both marks may be represented by the expression in 
so^uads of "eye see," yet the souiid similarity has no bearing in 
distinguishing between two trade-marks. 

I am of the opinion, however, that the doctrine of 
alternative forms applies in this case, because in ordinary speech 
the same idea is conveyed regardless of what is represented to the 
eye by the two symbols. > 

In the case of Morrison v. Case, 2 O.G., 544, it 
was held that the words "The Star Shirt* with the figure of a star 
and the words and device " X Shirt" constituted a single mark. 

In the case of Hemsheim &. Bro., 21 MS. Dec. ,68, the 
designation "Alf and Alf" was denied registration in view of the 
prior registration of the expression "1-2 and 1-2 on the ground 
that- 

-2- 



286 



287 



. &»• 'v--- '-J 



"The mere fact that the two marks , when seen side tiy side, are 
dlstinguishaMe, does not indicate a siifficient difference.^ for the 
hrand, should it once ■become popular, will be as well knowh "by its 
name as by the peculiar appearance of the mark upon it.* 

In the American Lubricating Oil Company case, 9 O.G. , 

687, it was held that- 

"The word "Star" and the well-lmown "figure" of a star 
are viewed in the light of a" trade-mark, "substantially the same. 

"If both the word and figure of a "star" were registered 
as a trade-mark the public would be misled by their use." 

The ease xinder consideration is on all fours with the 
above cited cases and especially with the case of Schrauder v. 
'Beresford & Company, Browne on Trade-marks, 2nd Ed., section 449- 
661, where it was held by the office and conceded by counsel for 
each party that the picture of a bouquet and the word "Bouquet" 
Interfered with each other when used on the same class of merchan- 
dise. In discussing this ease, Browne said: 

"If vision were the sole guide, the lack of physical re- 
semblance wo;ad have decided that no interference existed. One de- 
lineation could not possibly be mistaken for the other. Here is the 
test: Would the use by different houses of the two things cause 
confusion; The ear is the medium to mislead a purchaser. He 
might ask this question, "Have you the Bouquet ham " and either of 
the traders could truthfully reply in the affirmative. The picture 
and the word could not lawfully coexist as marks for rivals dealing 
in the sa:ne class of merchandise. The matter then resolves itself 
Into a question of priority of adoption. " 



-3- 



In my opinion the mark employed by the applicant so nearly resemb- 
les that of the registrant that the public would be deceived there- 
by. 

Section 3 of the Trade-lvlark Act, approved March 3, 1881, reads 
as folloTJs: 

"But no alleged trade-nark shall be registered, « s » which 
so nearly resembles some other person's lawful trade-mark as to be 
likely to cause confusion or mistake in the mind of the public, or 
to deceive purchasers." 

In reply to applicants' contention that his mark, and that of 

the registrant, do not convey the same idea when addressed to a 

Prench or German purchaser, it is only necessary to call attention 

to the case of the Glen Cove Manufacturing Company v. Ludeman, 32 

O.G. , 353, vrhere certain goods were put Up -for thQv^grmsnrmatket. • 

In that case the Court said: 

»« s X it does not follow that the article will be sold ex- 
clusively in that market, and the tendency of the word to 
mislead purchasers of the article into the beleif that it is 
the complaincint 's product does not depend solely upon the in- 
quiry whether it may mislead German purchasers. The defen- 
dant's act is comanitted here, and whether it is a wrong or is 
justfiable imist bo ascertained upon the principles of our 
jurisprudence, and not upon those of the law of Germany, 
s K K 3e s the court will not be concluded by the result of 
an Inquiiy whether it is used with an intent to mislead Pur- 
chasers in the coimtry where the goods are to be ultimately 
sold, because the goods may be sold here or in some country 



-4- 



ssp'C 



other than the one where they are to "be ultimately sold, and 
the act of Congress contemplates a complete protection to the 
right which it creates." ~ 

The action of the examiner in refusing registration of applicants 

alleged trade-mark should he, and it is hereby, affirmed. 






!S9 






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of 
E. C. WILLI_AM£ & ££•» 

Decided JtllLy 6, 1895» 

Reoorded Vol. 57, Page 152. 

. — oOo . 

PISHER, ASSISTANT COIvOasSI OKER: 

Tills is all appeal froim the decision of the examiner of 
trade-inarlLS refusing to register a maife, the essential feature of 
which is said to be the word "I^gienic", The design of the fac- 
simile includes a cloelc or watch dial, and centrally of the dial 
Is arr^iged a pair of wings outstretched. The word "I^gienic", it 
Is said by the applicant, "usually appears written or printed above 
the design or emblem in fanciful letters, but the location and 
style of lettering are unimportant and the entire emblesa or design 
may be omitted or changed at pleasute without materially affecting 
the character of the trade-marK., the essential feature of which is 
the word 'ii^gienic*. « 

5?he reason for refusing registration is that the Ttord 
"E^Srgienic" is a well-fenown descriptive word of the language and 
therefore incapable of exclusive appropriation as applied to mer- 
chandise. 



i^ < ^ '• ), 



^ 



1 



291 



It is axiomatic tliat no one may have the exclusive right 
to a word or phrase which is purely descriptive of the quality of 
the goods; Tmt it is argued that the precise, or scholastic use of 
the term "hygienic" restricts it as a descriptive adjective to the 
laws or rules of health or sanitation, and that the term as here 
used is not purely descriptive of 3 quality of -srhite oats; that is 
to say, the word is not "purely descriptive", as would he such 
words as "crushed", "ground", "rolled", "wholesome", "nutritious". 
But I think that to the average mind the teim "^srgienic'' has come 
to he as descriptive as the terms above quoted. The teim at once 
and without any reach of fancy means when applied to goods that 
they have health giving qualities. (See, for example, the century 
and standard dictionaries, registration 23,615, and, for a similar 
use of the word, Jaros I^gienic Underwear Co. v. Simons et al. ,58 
O.G. , 1095; moreover, in the advertisement in the current P£(pers 
of this city of "^gienic Ice", the word is used in the same sense 
as in this mark. ) 

I therefore affirm the decision of the examiner of trade 
marlfcs refusing to register the mark. 



I 



291 



•1 



?00 



'•^■^ 




■" "of "" 

Decided July 6, 1895» 

Recorded Vol, 57 » Page 154. 

PISHE21, ASSISTANT COLIMISSIOHER: 

Tliis is an appeal from the decision of the examiner of 
trade-mar^s refusing to register a label bearirjg the title "The 
Brownie Brand Salmon", and the representation of Brownies ejogaged 
in fishing and iDesSring a fish upon a platter and a representation 
of a fence carrying signs relative to the "business and the name of 
the fiim. The "border of the label has representations of Brownies 
in various attitudes. 

The exaniner states that he has refused registration in 
accordance with the established practice of the office that "a lar 
bel cannot be registered if it bear a device capable of sequestra- 
tion as a trade-marfe, until after such device is registered as a 
trade-mark". He states also that the words "The Brownie Brand" 
have been protected by registration of a trade-mark under date of 
Feb, 12, 1895, #26,043; but apparently he holds that there is fur- 
ther subject-Blatter for a trade-mark, registration in the picture, 



n^r 11^1. 



.'«»' i.j *^ 



which in his opinion does not constitute matter descriptive of a 

merchandise* 

•The trade-mark, as is comnon in a majority of laarlsis in 
actual use,has the picture in combination with the words "The 
Brownie Brand". Though the registrant states that the essential 
is the words "The Brownie Brand", that the stataaent is not final 
as affecting the place of the mark in coianierce* 

I do not think that where a trade-marK is so illustrated 
the registrant ^ould he required to segregate the picture and the 

words* 

The question then is whether or not this lahel has suf- 
firjient artistic merit to entitle it to registration. The examiner 
thinks it has and I agree with him. Prior to registration, how- 
ever, the application should he restricted to the precise defini- 
tion of goods indicated by the label accompanying. 

The decision of the examiner of trade-marks is therefore 






P (/"erruled. 



."<»' <-' '*^ 






i 



r 




APPLICATION 
THE JAMES LEFPEL CO,, 

Recorded_ Y2l*_5^ Pag© 231, 

PISHSR, ASSISTANT COMMlSSIOirER: 

This is a petition taken from the action of the examiner of 
trade-mai^s refusing to register the word "Colidataia" as a trade- 
mark for -crater wheels, on the gromid that it is a geographical name 

It is a general principle that geographical names 
can not "be registered as trade-marks. American Sardine Co., C.D. 
1873, 82; ox parte Marsching & Co., O.G. ,294; C.D. ,1895, 14S; ex 
parte Knapp 16 O.G. , 318; CD., 1879, 14S; ex parte Jarnum & Co., 
18 O.G. ,412; CD., 1880, 155; ex parte American Saw Co., 58 O.G., 
154; CD., 1892, 19. 

In several cases, however, an exception to this 
principle was recognized on the groimd that geographical names, 
like any words, mg^r "be chosen and arbitrarily applied where there 
is no deception as to the quality of goods or origin of their 
manufacture. Ex parte Green, CD., 1875, 121; ex parte Cornwall 



-1- 



sa 



^a ?. 



i 



bJ^II^AjLttL2~i 



& Bros. ,12 O.G. ,312; C.D. 1877; 85; ex parte Dover s,tamping Co., 
O.G. , 1784; CD., 1890, 94; ex parte Jenkins, 53 O.G. , 759; CD., 
1890, 161; and ex parte Mississippi Glass Co., 64 O.G», 713. 

The most recent authority upon this subject, however, is 
the decision of the Su|>reme Court in Columbia Mill Co. vs. Alcorn 
et al., 65 O.G., 1916. In this case the complainant brought a 
hillto restrain the defendant from using the 'word " Columbia" on 
a brand placed on flour sold by them. The complainant alleged 
that this word had been selected as a fanciful and arbitrary name 
or trade-mark. 

The Court i nter alia , said: 

"The word 'Columbia' is not the subject of exclusive 
appropriation under the general rule that the word or 
words, in common use as designating locality, or section 
of a country, can be appropriated by any one as his ex- 
clusive trade-ark. 3€ h » 

" The applicant was no more entitled to the oxclusiv 
use of the word 'Coliaabia' as a trade-mark than hift. .wpu3'^ 
j^ave been to the use of the word 'America', or .United 
States' ,or 'Minnesota* ,or Minneapolis' . These merely 
geographical names can not be appropriated and made the 
subject of an exclusive property. They do not, in and of 
themselves, indicate anything in the nature of origin, 
manufacture, or ownership; and in the present case the 
word 'Columbia' goves no information on the subject of 
origin, production, or owenership". 

It appears to me thit the present case comes squarely 

under the doctrines set forth by this decision. There are at least 



OO 1 



thirty cities in the United States named "ColuinTDia" and anyone 
living in any of these cities and malcing or using , or who may 
hereafter malce or use, the goods that applicant does, could with 
equal right and truth adopt and use the word "Coliunbia" as a trade- 
mark for such goods. As was said in Cox's Manuel of Trade-Marks, 
sec. 473, the manufacturer in Colvarfbia "Would have the better 
right to the ; word, although not an exclusive right. "If others than 
applicant have such a right to use the name upon the class of 
goods cited, it cannot be a trade-mark, as the .essential element 
of exclusive right to use is lacking. (See ex parte Hau, 55 Iffi. 
Dec., 125, and ex parte ^Ito. Sclimiat Baking Co., 55 MS. Dec, 139. ) 

I am of the opinion that the examiner acted cor- 
rectly in refusing to register the word "Colimibia" as a trade-nark 
and his action is affirmed^. 



o() I 



«l 



ll 



^ « 



1;- 



295 



'.'> 



/ 



Deoided Aug. S, 18 95. 

Recorded Vol. 57, Page 255« 

oOo 

SEYIIOUR, CCin;i SSI ONER; 

This is a petition tal-cen from tlie examiner's refusal to r 
register ae a trade-nark for salmon the symbol "Rcsebtid", The ex- 
aminer's refusal is "cased upon the fact that the applicant is try- 
ing to have registered two syni'bols in ane application, the repre- 
sentation of a rosebud and the v7ord rosebud. The essential fea- 
tures of the application are set forth in alternative form. 

In refusing registration the examiner was follovring prec- 
edent, although some of the cases turn on the question whether the 
TTord and the figure are true alternatives. It seems that the trade- 
marlc as offered is, so far as appears, a laTi7ful common law mark, and 

j where the prescribed statutory requisites are present, it is thought 

I 

\ that the administration of the law should be reasonably liberal 



concemir)g registration. I incline to adopt- his viev/ and the pe- 
tition is granted. 



B 



of 
Decided Atig. 12, 1895. 

a .11 ■ I ■ ■ I ■■■!■■ ■ r ^ 

Rccoi-decl Vol. 57, Page 31 5 « 

oOo 

FISHER, AGSITAITT COmHSSIClIEPv.: 

This is a petition frora the decision of the examiner of 

trade-marks refusing to register the words "Bay State". In Col-oia- 

iDia Mill Company v. Alcorn et al. , 65 O.G. ,1916; CD. ,1893,672, the 

following passage occurs': 

"The TTord 'ColiunlDia* is not the subject of exclusive ap- 
propriation imdor the general rule that the word or vrords, in 
conrnon use as designating locality, ^or section of a country, 
cannot "be appropriated toy any one as his exclnsive Trade-mark"' 

It seems to me that the decision referred to applies ex- 
actly in the present case and the decision of the examiner is 
therefore affirmed. 



(•; 



« 




29' 



208 



Vs 



APPLICATION. 
Of 

L. N. Brunsv;ig. 
- - Decided August 17 , ;895. = . 

Recorded Vol.57, ?. 342. 

oOo 

Fisher, Assist ajit Coimaiss loner: 

Thlr, Is a petition from the cction of the exatiiner re- 
fusing to register the trade-nark on the ground that the raechanlcal 
symbol noT?7 shoi^n is an entirely subordinate feature, as appears 
from the fao-slmlle letoel originally filed, and that it constitutes 
merely printer's ornamentation and is public property and incapa- 
ble of exclusive appropriation as a trade-mark. The examiner 
supports his position by citation from "The Printer's Kandy Book, 
Type Spec Inens, Seventeenth Specimen Book," and citys the decision 
in the case of the Metropolitan Yl&tch Co., 44 IS. Dec, 272. 

The examiner's position is obviously correct, and the 
petition Is therefore denied. 



'^If^ 






2m 



ouu 



T 



A P ? L I C A T I IJ . 
of 
The United states Printing Company. 

Decided August 20, 1895. 



Recorded Vol.57, P. 357. 

OOO 

Pisher, Assistant CoEnnissioncr. 

This is exi appeal from the action of the examiner 
of trade-narks refusing to register a print or lebel which bears 
the title of "Scroll Back No. 2 in Capitol Brand of U. S. Playing 
Cards," and which, it is stated, is printed Toy the applicant £i.nd 
sold tp- its customers, applied to the goods in which it deals- 
playing cards and wrappers therefor. 

Registration has been refised upon the ground that 
the lebel has not sufficient artistic merit to entitle it to re- 
gistration, and because the sub;iect-matter of the lebel should be 
protected, if at all, by a design patent. 

The design shown is evidently intended or adapted 
for the back of a playing card. Tt is suggeative or descriptive 
of cards only because it is a fac-simile o f the back of a card; 

-1- 



300 




m 



p 



and its size and proportions are more vital than the design in 
the indication of the goods. If the design Trere many tines larger 
it VTOuld be as stiggestive of a panel, a rug, or siniiar article on 
which a reversible design T70uld be used, as it would be of a play- 
ing card. 

It is a necessary riile and policy of this office to see 
that the lines betis-een the forms of protection it is inpov^ered to * 
^^rant bMq maintained. ITo trade-mark can be granted under the guise 
of a libel, no mechanical patent as a design patent, and no lebel 
should be registered when there is the first suggestion of a new 
design adapeted to be applied to an article of manufacture and be- 
come a part thereof. Papier ^abrigue Co . , 18 MS. , 477. 

It Is true, as the applicant urges, that playing cards 
were copyrighted by the Librarian of Congress prior to the trans- 
fer of prints and labels to tjie custody of the Commissioner of 
Patents. This is evidenced by the circuit court decision in 
Richardson v. Miller, 12 0. G. , 3. The subject of this suit, how- 
everj waiJ fifty-two separable copyrights upon the faces of fifty- 
two playing cards. There seems to be a distinction between the 
varying pictured faces of the cards and the uniform and generally 



-2- 



f s^oo 



1 



501 



more conventional baclc. Bat the existence of copyrights upon 
playing cards or a decision substaining such a copyright goes no 
further tiian to sustain the artistic merit of the particular copy- 
right. It is not binding upon the ConEnissionor of Patents so as 
to direct the classification he shall apply to any design, nor do 
the circemstances'^nder ^;7hich such registration or decision is 
made offer any guide to the proper solution of such a question as 
is here presented. 

I thinlL that the design presented 'is not proper subject- 
matter for registration as a lebel, because it is primarily a de- 
sign to be placed u;on an article of manufacture and to become a 
part thereof. It is not necessary in this view to consider its 
standing as a lebel ind^ the recent decisions of the supreme Court, 
and the office. 

The decision of the examiner of trade-marKs is affirmed. 



:0() 



'0 






ywv{~:: ~ ^ :^yv 



303 



APPLICATION, 
Of 

Blanton Hilling company • 

Decided August 21, 1895. 

Recorded Vol. 57. P. 372. 
. oOo 

Fisher, Assistant Coiiinlssioner: 

This is an appeal iron the decision of the examiner 

of trade-aarlLS refusing registration to the words "Queen Bess" 

used upon wheat flour, in view of ^registration IIo. 9,201 of B. L. 

7;ing & Co., V7hich consists of the words "Queen Be&s^' applied to the 

same merchandise. 

It is undoubtedly true that the t?/o marlcs arc radically 

different in raeanirxg and clearly distinguishable in sound. I think, 

however, that very rliany people would fail to distinguish the marks 

in a casual reading preceding or sub sequent to purchase. As "a - 

short phrase between the buyer and seller" there probably would 

be biit little trouble in case of an oral order; but even in that 

case there is a posibility that the oral order for "Queen Bess" 

might be taken as an abreviation -"Queen Bess," and might form 

a sufficient excuse for substituting one bi*and for another. 



k 



'f3Q2 



I 




o 



In a written order, it is obvious that in many oases it would be 
impossiole to tell which brand had been ordered, and a dealer 
might choose the brand at random, or even deliberatly chc»ise his 
own preference, relying upon the similarity in the appearance of 
the two marks to further the ni stake or deception. It seems on 
the whole to allow this trade-mark would be to encourage opportu- 
nities for deception and to sanction a mark which must, at best, 
^ create considerable confusion. 

The decission of the examiner of trade-marks is therefor© 
affirmed. 



11 




o 



f 



304 



APPLICATION. 
Of 

The Crawford Manufacturing company. 
Decided August 22, 1895. 



Recorded Vol.57. P. 330. 



-oOo- 



Fisher, Assistant Commissioner: 

This is an appeal from the decision of the examiner of 
trade-narKs refusing registration of the word "CraT?ford", on the 
ground that it is a geographical name. 

It is undoubtedly a geographical term. It is not merely 
a term couinon in the I^stal Guide, out it is an old English geog- 
raphical term, and is, for example, the name of a county in Penn- 
sylvania, and is also the name of a celebrated locality in the 
White Mountains. 

But in ray opinion there is a stronger reason for refusing 
registration. There is a statutory bar to tlie registration of the 
word, for it is the name of the applicant. See ex-par t e Dawes and 
Fanning, 1 0. G. ,27; ex p arte Fairchild, 21 C. G. ,789; ex parte 
Adriance, Piatt £: Co., 20 0. G. ,1820; ex parte The Creedmore 



-1- 



r 



30 



r 



Cartridge Co., 56 0. G. ,1333. These deoissions also include a 
nvmiber of autrorities to the effect that a proper name unaccom- 
panied 'oy a symbol is inappropriate as a trade-mark, particularly 
when it is the name of the applicant or the salient part of the 
title of a company or corporation. 

The decision of the examiner is affirmed. 



po. 



^l 



W tr' 



\ 



R 



APPLICATIOIT. 
Of 

Robert P. Pritc'nard. 
Decided August 22, 1895. 



Recorded Vol. 57. P. 374. 

oOo 



Fisher, Assistant Coraraissioner: 

This is a petition talced from the action of the examiner 
of trade-nai-ks refusing registration of a trade-marlc, the essential 
feature of which is stated to be "an eagle represented by word or 
syribol." The examiner holds that the word and the symbol are not 
true alternatives. 

In a sinil^r ease, ex part e Kinney, decided August S, 
1895, it was said that "Where the prescribed statutory requsites 
are present, it is thought that the administration of the law 
should be reasonably liberal concerning registration." 

The petition is granted. 



I 



m 



\ 



•■trrf^^v- ■ :'\-^yi>^~-. 



'S